Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 20
`Date: November 19, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ASKELADDEN LLC,
`Petitioner,
`v.
`LEIGH M. ROTHSCHILD,
`Patent Owner.
`
`IPR2019-00855
`Patent 8,799,088 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, JOHN P. PINKERTON, and
`JAMES A. WORTH, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`I. INTRODUCTION
`
`A. BACKGROUND
`Askeladden LLC (“Petitioner”) filed a petition (Paper 2, “Pet.”) to
`institute an inter partes review of claims 1, 2, 11, 14–19, and 21 (the
`“challenged claims”) of U.S. Patent No. 8,799,088 B2 (Ex. 1001, “the
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`IPR2019-00855
`Patent 8,799,088 B2
`’088 patent”). 35 U.S.C. § 311. Leigh M. Rothschild (“Patent Owner”) did
`not file a Preliminary Response. On November 21, 2019, based on the
`record before us at the time, we instituted an inter partes review of all
`challenged claims on all grounds alleged as indicated in the table below.
`Paper 8 (“Institution Decision” or “Dec.”).
`
`Claims Challenged
`1, 2, 11, 14–19, 21
`
`35
`U.S.C. §
`103
`
`References/Basis
`Karthik1 and Robinson2
`
`1, 2, 11, 14–19, 21
`
`103
`
`Karthik and Alvarez3
`
`After we instituted this review, Patent Owner filed a paper styled as a
`Patent Owner Response in opposition to the Petition (Paper 13, “Mot.” or
`“Motion”) that substantively constituted a non-contingent motion to amend
`all challenged claims by proposing amendments to independent claims 1, 17,
`and 21. Mot. 4. Petitioner filed an Opposition to the Motion (Paper 14,
`“Opp.”). Patent Owner did not file a reply in support of the Motion.
`During a conference call to discuss whether the parties wished to
`appear for an oral hearing, the parties indicated that no oral hearing was
`necessary. Paper 19, 3. Accordingly, we decide the issues presented in the
`parties’ papers on the written record.
`We have jurisdiction under 35 U.S.C. § 6. The evidentiary standard is
`a preponderance of the evidence. See 35 U.S.C. § 316(e) (2018); 37 C.F.R.
`
`
`1 US 2005/0165700 A1, published July 28, 2005 (Ex. 1003, “Karthik”).
`2 US 7,389,269 B1, issued June 17, 2008 (Ex. 1004, “Robinson”).
`3 US 7,735,125 B1, issued June 8, 2010 (Ex. 1005, “Alvarez”).
`
`2
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`IPR2019-00855
`Patent 8,799,088 B2
`§ 42.1(d) (2019). This Final Written Decision is issued pursuant to
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons expressed below, we conclude that Petitioner has
`demonstrated by a preponderance of evidence that proposed substitute
`claims 1, 2, 11, 14–19, and 21 are unpatentable as obvious, and we deny
`Patent Owner’s Motion to Amend.
`B. RELATED PROCEEDINGS
`Petitioner identified as a related matter the district court proceeding of
`Rothschild Biometric Systems, LLC v. USAA Saving Bank, No. 2:17-cv-
`00061-RWS-RSP (E.D. Tex.), which was dismissed with prejudice. Pet. 2.
`Petitioner also identified as a related matter, the Board proceeding of Unified
`Patents Inc. v. Rothschild Biometric Systems, LLC and SSR Patent Holdings,
`LLC, IPR2017-01514, Paper 5 (PTAB January 4, 2018), in which the Board
`instituted inter partes review of the ’088 patent. Id. (citing Unified Patents,
`Paper 5). The Board terminated that review pursuant to a settlement by the
`parties. Pet. 2 (citing Unified Patents, Paper 9). The Board also instituted
`review of claims 3–10, 12, 13 and 20 of the ’088 patent in a companion
`proceeding, IPR2019-00856.
`C. NON-CONTINGENT NATURE OF PATENT OWNER’S MOTION TO AMEND
`Patent Owner does not address the patentability of the challenged
`original claims in the ’088 patent, but rather seeks to amend all those claims
`by amending each of the original independent claims 1, 17, and 21. Mot. 4.
`Although the Board expects a Patent Owner to present substitute claims
`using new claim numbers, 4 because Patent Owner appears pro se, we
`
`
`4 “Where a motion seeks to replace an original patent claim with a new
`claim, the new claim should be identified as a proposed substitute claim and
`
`3
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`IPR2019-00855
`Patent 8,799,088 B2
`suspend that practice in this proceeding, and we interpret Patent Owner’s
`non-contingent Motion as canceling original claims 1, 2, 11, 14–19, and 21
`and presenting amended versions of those claims with the same numbering.
`We, therefore, review the patentability of the newly presented amended
`versions of claims 1, 2, 11, 14–19, and 21.
`D. THE ’088 PATENT
`The ’088 patent, titled “System and Method for Verifying User
`Identity Information in Financial Transactions,” relates generally to a system
`for applying for, receiving, and verifying the authenticity of a “financial
`services provider card,” e.g., a credit card. Ex. 1001, code (54). More
`specifically, the ’088 patent describes a way to verify a card user’s identity
`during a purchase transaction, using biometric data stored on a remote
`server. See id. at 4:43–5:2.
`
`
`all changes relative to the original claim clearly discussed.” Office Patent
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012) (“Practice
`Guide”). “Any claim with a changed scope subsequent to the amendment
`should be included in the claim listing as a proposed substitute claim, and
`should have a new claim number.” Lectrosonics, Inc. v. Zaxcom, Inc., Case
`IPR2018-01129, Paper 15, 8 (Feb. 25, 2019) (precedential) (“Lectrosonics”).
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`Patent 8,799,088 B2
`Figure 1 of the ’088 patent is reproduced below.
`
`
`Figure 1 of the ’088 patent illustrates computer network 100 including user
`terminal 112 through which a user applies for a card from a financial
`services provider, e.g., a bank, via the internet, and enters information
`including biometric identification data. Id. at 5:48–53. Figure 1 also depicts
`network 100 including remote server 114 (financial services provider server)
`and database 115 for storing user information and biometric data. 5 Also,
`
`
`5 The ’088 patent refers to server 114 at various points as “remote computer
`114,” “remote server 114,” and “financial services provider 114.” See, e.g.,
`Ex. 1001, 5:53; 6:19, 40. We understand all of these references to relate to
`financial services provider server 114 shown and described in Figure 1.
`
`5
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`IPR2019-00855
`Patent 8,799,088 B2
`network 100 includes point of sale terminal 102 including card swipe
`reader 120 for completing a purchase transaction. Id. at 5:4–9, 6:32–35.
`The ’088 patent describes a user applying for a credit card on the
`financial services provider website via user terminal 112. Id. at 7:6–10.
`Once approved, for security purposes, “the financial service provider
`requests the user to provide biometric identification data specific only to the
`user.” Id. at 7:21–23. The biometric data may include “physical features
`such as face, fingerprint, iris, retina, or hand geometry, or behavioral
`features, such as signature, voice, or gait.” Id. at 7:29–31. The biometric
`data is stored in database 115 on remote server 114. Id. at 8:40–43. In one
`embodiment, the financial services provider may choose to verify the
`entered biometric data with a third party; for example, “fingerprint scans,
`digital photographs, DNA fingerprints, etc., . . . can be checked with some
`government agencies such as the Department of Motor Vehicles (DMV).”
`Id. at 8:19–22.
`When the user wishes to use the approved financial services card at a
`transaction at point-of-sale terminal 102, the user swipes the card and
`“inputs the required biometric identification data into display/touch screen
`126 or 125.” Id. at 9:20–23. Before allowing the transaction to proceed, a
`“verification (step 410) is made by comparing the biometric identification
`data entered into the point-of-sale terminal 102 with the biometric
`identification data that is stored in the network connected remote server 114
`database 115.” Id. at 9:56–60. The system executes the transaction after the
`user’s biometric identification data is verified. Id. at 10:30–31.
`Of the proposed substitute claims, claims 1, 17, and 21 are
`independent. Id. at 10:40–13:3; see Mot. 8–12. Dependent claims 2, 11, 14,
`
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`Patent 8,799,088 B2
`15, and 16 depend directly from substitute claim 1, Ex. 1001, 11:4–55, and
`dependent claims 18 and 19 depend directly from substitute claim 17, id.
`at 12:22–28. Substitute claim 1, which is representative, recites:
`1 (amended). A method for verifying the identity of users of
`financial services provider cards over a network, the method
`comprising:
`[A] providing a web site for verifying the identity of a user of a
`financial services provider card, the web site being hosted by
`at least one server in communication with the network;
`[B] requesting, by the at least one server, a plurality of biometric
`identification data of the user;
`[C] uploading the plurality of biometric identification data of the
`user requested by the at least one server via a network
`connected computing device to the web site;
`[D] authenticating, by the at least one server, the uploaded
`plurality of biometric identification data with a biometric
`identification data stored in a related information repository;
`[E] storing the plurality of biometric identification data in a
`database coupled to the at least one server; and
`[F] uploading biometric identification data provided by the user
`at a point-of-sale terminal to the at least one server wherein
`the financial services provider decide the type of biometric
`identification data required for the transaction;
`[G] determining, by the at least one server, if the biometric
`identification data provided by the user at point-of-sale of the
`terminal matches the biometric identification data retrieved
`from the database and sending a validation signal to the
`terminal if the biometric identification data provided by the
`user at point-of-sale of the terminal matches the biometric
`identification data retrieved from the database;
`[H] receiving the validating signal at the point-of-sale terminal
`and executing a purchase transaction at a point-of sale
`terminal.
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`IPR2019-00855
`Patent 8,799,088 B2
`Mot. 8–9; see also Opp. 4–5; Pet. 46–50 (reflecting labels used by Petitioner
`to ease discussion).
`The underlined phrase in element 1F above reflects the proposed
`amendment to claim 1. Mot. 9. The same phrase is added to substitute
`independent claims 17 and 21. See id. at 9 (element 17A as amended), 11
`(element 21A as amended). Patent Owner does not remove any language
`from the original independent claims 1, 17, and 21. Id. at 9–12.
`
`II. ANALYSIS
`
`A. CLAIM INTERPRETATION
`We interpret claims in the same manner used in a civil action under
`35 U.S.C. § 282(b) “including construing the claim in accordance with the
`ordinary and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to the patent.”
`See Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340, 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b)
`effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b)
`(2019). 6 Only terms that are in controversy need to be construed, and then
`only to the extent necessary to resolve the controversy. Nidec Motor Corp.
`v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir.
`2017).
`Petitioner addresses a number of phrases recited in the original claims,
`Pet. 11–13, and Patent Owner does not address the meaning of any of those
`
`
`6 This rule change applies to the instant Petition because it was filed after
`November 13, 2018. See id.
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`IPR2019-00855
`Patent 8,799,088 B2
`phrases, see Mot. 4 (not addressing patentability of original claims).
`Because no dispute currently exists regarding the meaning of any language
`in the original claims, we apply the legal standards set forth above when
`reading that language without explicitly construing any claim language.
`Petitioner contends that the new language proposed by Patent Owner
`for substitute independent claims 1, 17, and 21 is indefinite because it is
`“amenable to multiple interpretations.” Opp. 5–6. We address Petitioner’s
`argument and interpret that new language in Part II.D below.
`B. LEGAL STANDARDS
`In an inter partes review, amended claims are not added to a patent as
`of right, but rather must be proposed as a part of a motion to amend.
`35 U.S.C. § 316(d). The Board must assess the patentability of proposed
`substitute claims “without placing the burden of persuasion on the patent
`owner.” Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1328 (Fed. Cir. 2017)
`(en banc); see also Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-001129,
`Paper 15 at 3–4 (PTAB Feb. 25, 2019) (precedential). Subsequent to the
`issuance of Aqua Products, the Federal Circuit issued a decision in Bosch
`Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017)
`(“Bosch”), as well as a follow-up Order amending that decision on
`rehearing. See Bosch Auto. Serv. Sols., LLC v. Iancu, No. 2015-1928 (Fed.
`Cir. Mar. 15, 2018) (Order on Petition for Panel Rehearing).
`In accordance with Aqua Products, Bosch, and Lectrosonics, a patent
`owner does not bear the burden of persuasion to demonstrate the
`patentability of the substitute claims presented in the motion to amend.
`Rather, ordinarily, “the petitioner bears the burden of proving that the
`proposed amended claims are unpatentable by a preponderance of the
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`evidence.” Bosch, 878 F.3d at 1040 (as amended on rehearing); see
`Lectrosonics, Paper 15 at 3–4. In determining whether a petitioner has
`proven unpatentability of the substitute claims, the Board focuses on
`“arguments and theories raised by the petitioner in its petition or opposition
`to the motion to amend.” Nike, Inc. v. Adidas AG, 955 F.3d 45, 51 (Fed. Cir.
`2020). The Board itself also may justify any finding of unpatentability by
`reference to evidence of record in the proceeding. Lectrosonics, Paper 15
`at 4 (citing Aqua Products, 872 F.3d at 1311 (O’Malley, J.)).
`Notwithstanding the foregoing, Patent Owner’s proposed substitute
`claims must meet the statutory requirements of 35 U.S.C. § 316(d) and the
`procedural requirements of 37 C.F.R. § 42.121. Lectrosonics, Paper 15
`at 4–8. Accordingly, Patent Owner must demonstrate: (1) the amendment
`proposes a reasonable number of substitute claims; (2) the proposed claims
`are supported in the original disclosure (and any earlier filed disclosure for
`which the benefit of filing date is sought); (3) the amendment responds to a
`ground of unpatentability involved in the trial; and (4) the amendment does
`not seek to enlarge the scope of the claims of the patent or introduce new
`subject matter. See 35 U.S.C. § 316(d); 37 C.F.R. § 42.121.
`The Supreme Court in KSR International Co. v. Teleflex Inc., 550
`U.S. 398 (2007), reaffirmed the framework for determining obviousness as
`set forth in Graham v. John Deere Co., 383 U.S. 1 (1966). The KSR Court
`summarized the four factual inquiries set forth in Graham that we apply in
`determining whether a claim is unpatentable as obvious under 35 U.S.C.
`§ 103(a) as follows: (1) determining the scope and content of the prior art,
`(2) ascertaining the differences between the prior art and the claims at issue,
`(3) resolving the level of ordinary skill in the pertinent art, and
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`(4) considering objective evidence indicating obviousness or
`nonobviousness. KSR, 550 U.S. at 406 (citing Graham, 383 U.S. at 17–18).
`In an inter partes review, Petitioner cannot satisfy its burden of proving
`obviousness by employing “mere conclusory statements.” In re Magnum
`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`Petitioner must explain how the proposed combinations of prior art
`would have rendered the challenged claims unpatentable. An obviousness
`analysis “need not seek out precise teachings directed to the specific subject
`matter of the challenged claim, for a court can take account of the inferences
`and creative steps that a person of ordinary skill in the art would employ.”
`KSR, 550 U.S. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249,
`1259 (Fed. Cir. 2007). However, Petitioner cannot satisfy its burden of
`proving obviousness by employing “mere conclusory statements,” but “must
`instead articulate specific reasoning, based on evidence of record” to support
`an obviousness determination. Magnum Oil, 829 F.3d at 1380–81.
`Petitioner also must articulate a reason why a person of ordinary skill in the
`art would have combined the prior art references. In re NuVasive, 842 F.3d
`1376, 1382 (Fed. Cir. 2016).
`At this final stage, we determine whether a preponderance of the
`evidence of record shows that the challenged claims would have been
`rendered obvious in view of the asserted prior art. We analyze the asserted
`grounds of unpatentability in accordance with these principles.
`C. LEVEL OF ORDINARY SKILL
`We review the grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art at the time of the
`invention. Graham, 383 U.S. at 17. Based on testimony by Peter
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`Patent 8,799,088 B2
`Alexander, Ph.D., Petitioner contends that an ordinarily skilled artisan as of
`June 11, 2008, would have either: “(i) a Bachelor-of-Science degree in
`electrical engineering, computer science, or computer engineering, or
`equivalent, and at least two years of additional experience in database and
`networking technology, computer security and/or authentication using
`biometric data, or (ii) a post-graduate degree in electrical engineering,
`computer science, or computer engineering, or equivalent.” Pet. 13 (citing
`Ex. 1002 ¶¶ 14–17). Patent Owner does not contest Petitioner’s position
`relating to the level of ordinary skill. See generally Mot. We find
`Petitioner’s description of the ordinary level of skill in the art at the time of
`the invention to be consistent with the level of skill reflected in the prior art
`of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`Accordingly, we adopt and apply the level of ordinary skill proffered by the
`Petitioner in this proceeding.
`D. WHETHER THE “DECISION LIMITATION” IS INDEFINITE
`Patent Owner proposes that original independent claims 1, 17, and 21
`be amended to further require “wherein the financial services provider
`decide the type of biometric identification data required for the transaction”
`(the “Decision Limitation”). Mot. 9–12.
`Petitioner analyzes whether the Decision Limitation is sufficiently
`definite under 35 U.S.C. § 112 ¶ 2 in the context of substitute claim 17,
`which recites (with the Decision Limitation underlined):
`17 (amended). A system for using biometric identification data
`to positively identify users of financial services card, comprising:
`[A] a remote server configured for requesting at least one
`biometric identification data of a user associated with a
`financial services card, the card being cross associated with a
`card identity, wherein the financial services provider decide
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`IPR2019-00855
`Patent 8,799,088 B2
`the type of biometric identification data required for the
`transaction;
`[B] a network connected personal computing device configured
`for uploading the at least one biometric identification data of
`the user and for transmitting the at least one biometric
`identification data to be associated with the card to the remote
`server;
`[C] the remote server further configured for authenticating the
`uploaded plurality of biometric identification data with
`biometric identification data stored in a related information
`repository;
`[D] and storing a record of the uploaded at least one biometric
`identification data;
`[E] a terminal configured for reading the card identity from the
`card, prompting the user to input the at least one biometric
`identification data and for transmitting the card identity and
`the inputted at least one biometric identification data to the
`remote server; and
`[F] wherein the remote server is configured to verify the
`biometric identification
`[G] data for the card for a transaction by retrieving the record of
`the user’s biometric identification data record from the
`database, determining if the biometric identification data
`input into the terminal matches the record of biometric
`identification data retrieved from the database and sending a
`validation to the terminal if the biometric identification data
`entered into the terminal matches record of the biometric
`identification data retrieved from the database.
`Opp. 4–5.
`Petitioner contends that the Decision Limitation is indefinite because
`it is “amenable to multiple interpretations,” which depend upon when the
`financial services provider “decides” on the type of biometric data required
`for the transaction. Opp. 5–6. More specifically, Petitioner argues that the
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`Decision Limitation may be interpreted to require that the financial services
`provider decide on the type of biometric data required at any one of the
`following three times:
`(1) Decision during the enrollment stage (alternative 1) –
`The financial services provider’s server “decides” which type(s)
`of biometric data to request from the user and authenticate using
`the related information repository, which are stored in the server
`database for validation of a later transaction (see e.g., substitute
`claim 17 limitations [17.A]-[17.D] (above));
`(2) Decision during the transaction stage (alternative 2) –
`The financial services provider’s server “decides” which type(s)
`of biometric data a user is prompted to input at a terminal (e.g.,
`a point-of-sale terminal to validate a transaction (see e.g.,
`substitute claim 17 limitations [17.E]-[17.G] (above));
`(3) Decision during the transaction stage (alternative 3) –
`The user may input different types of biometric data at a terminal
`(e.g., a point-of-sale terminal), and the financial services
`provider’s server “decides” to validate the transaction using the
`type(s) of biometric data already stored in the database during
`the enrollment stage (see e.g., substitute claim 17 limitation
`[17.G] (above)).
`Id. at 5–6.
`Petitioner argues that an ordinarily skilled artisan would consider any
`of the three alternative interpretations of the Decision Limitation to be
`equally plausible. Id. at 6 (citing Ex. 1027 ¶ 14). Petitioner further argues
`that the “decision” about what biometric data is required could occur during
`the enrollment stage (elements 17A–D) or later during the transaction stage
`(elements 17E–G). Id.
`The claim language itself implies that the financial services provider
`decides which biometric information is required during the enrollment stage
`because the Decision Limitation is added to element 17A, which is the first
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`step in the enrollment stage recited in elements 17A–D. However, “in
`assessing definiteness, claims are to be read in light of the patent’s
`specification and prosecution history.” Nautilus, Inc. v. Biosig Instruments,
`Inc., 572 U.S. 898, 908 (2014).
`Patent Owner identifies support for the Decision Limitation in the
`Specification that favors interpreting the Decision Limitation as occurring
`during the transaction stage (i.e., during elements 17E–G). Mot. 14–15
`(citing Ex. 1001, 9:9–14). The cited portion of the Specification states: “In
`another embodiment, the financial service provider may have the system set
`up such that the server 114 queries through the point-of-sale terminal 102
`and informs the merchant which biometric identification data is/are required
`for the desired transaction.” Ex. 1001, 9:9–14 (emphasis added). The plain
`language of the claim is consistent with our interpretation because it
`specifies that the biometric data is the data “required for the transaction,”
`which refers to the “transaction” recited in element 17G (describing the
`operation of the claimed system during a transaction stage).
`Based on our review of the Specification and claim language, we
`conclude that the Decision Limitation is sufficiently definite under 35 U.S.C.
`§ 112, ¶ 2. Based on that review, we also interpret the Decision Limitation
`to require that the financial services provider informs, through the server,
`which type(s) of user biometric identification data must be received at the
`terminal (e.g., a point-of-sale terminal) to validate the transaction.
`E. WHETHER THE MOTION MEETS THE REQUIREMENTS OF 35 U.S.C. § 316(d)
`AND 37 C.F.R. § 42.121
`1. Number of Claims
`Patent Owner proposes a one-to-one substitution of claims for
`challenged original claims 1, 2, 11, 14–19, and 21, which presumptively
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`meets the requirements of 35 U.S.C. § 316(d)(1)(B) and 37 C.F.R.
`§ 42.121(a)(3). Petitioner does not argue that Patent Owner has introduced
`an unreasonable number of substitute claims. See generally Opp. We
`determine that Patent Owner has proposed a reasonable number of substitute
`claims.
`2. Responsiveness
`We may deny a motion to amend if the “amendment does not respond
`to a ground of unpatentability involved in the trial.” 37 C.F.R.
`§ 42.121(a)(2)(i) (2019). Patent Owner contends that its proposed
`amendments respond to Petitioner’s grounds of unpatentability of the
`original claims because none of the prior art upon which Petitioner’s
`challenges were based discloses or suggests the Decision Limitation added
`to every challenged claim. Mot. 13. Petitioner does not argue that Patent
`Owner’s amendment fails to respond to the challenges to the original claims.
`See generally Opp. Rather, Petitioner relies upon a new prior art reference
`to address the Decision Limitation. Id. at 10–25. We determine that the
`Motion meets the requirements of 37 C.F.R. § 42.121(a)(2)(i).
`3. Whether the Amendments Enlarge the Scope of the Claims
`An amendment may not enlarge the scope of the claims of the patent.
`35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii). We determine that
`Patent Owner’s addition of the Decision Limitation narrows the scope of
`every challenged claim and thus satisfies the prohibition against enlarging
`the scope of any claim.
`4. Whether the Amendments Introduce New Matter
`An amendment may not introduce new matter. 35 U.S.C. § 316(d)(3);
`37 C.F.R. § 42.121(a)(2)(ii). As noted above, Patent Owner identifies a
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`portion of the Specification as providing support for the Decision Limitation.
`Mot. 14–15 (citing Ex. 1001, 9:9–14). 7 The cited portion of the
`Specification states: “In another embodiment, the financial service provider
`may have the system set up such that the server 114 queries through the
`point-of-sale terminal 102 and informs the merchant which biometric
`identification data is/are required for the desired transaction.” Ex. 1001,
`9:9–14 (emphasis added). As discussed above, our interpretation of the
`Decision Limitation is supported by this portion of the Specification.
`Petitioner argues that if Patent Owner were to argue that the Decision
`Limitation can be met by the financial services provider deciding which
`biometric information is required for a transaction during the enrollment or
`transaction stages, then the claims would be unpatentable for lack of written
`description support in the Specification. Opp. 8. Petitioner concedes that
`the portion of the Specification relied upon by Patent Owner for support
`describes making the decision about what biometric information is needed
`during the transaction stage. Id. at 9. As explained in Part II.D above, we
`have narrowly interpreted the Decision Limitation to encompass only such
`decisions. Accordingly, Petitioner does not persuade us that the
`Specification fails to provide the required written description for the
`
`
`7 Normally, a Patent Owner must identify material in the originally filed
`application leading to issuance of the patent at issue that supports the
`proposed amendment. Lectrosonics, Paper 15 at 7. Failing to cite the
`original disclosure is a basis for denying a motion to amend. Id. However,
`because Patent Owner appears pro se, we reviewed the original disclosure
`ourselves to verify that the portion of the Specification cited is identically
`found in that disclosure. Compare Ex. 1016 ¶ 42, with Ex. 1001, 9:9–14.
`Accordingly, in this case, we find that Patent Owner’s citation to the
`Specification functionally refers to material in the original disclosure.
`
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`IPR2019-00855
`Patent 8,799,088 B2
`Decision Limitation as we have interpreted it. Additionally, we conclude
`that Patent Owner has established that the Specification meets the written
`description requirement for the Decision Limitation.
`F. PROPOSED SUBSTITUTE CLAIMS 1, 2, 11, 14–19, AND 21:
`OBVIOUSNESS IN VIEW OF KARTHIK, ROBINSON, AND ORTIZ
`Petitioner argues that substitute claims 1, 2, 11, 14–19, and 21 are
`obvious in view of Karthik, Robinson, and Ortiz. 8 Opp. 10–25. Petitioner
`relies upon its prior showing that Karthik and Robinson render original
`claims 1, 2, 11, 14–19, and 21 unpatentable and relies upon Ortiz as
`motivating an ordinarily skilled artisan to enhance the security of the system
`suggested by Karthik and Robinson by adding the Decision Limitation. Id.
`Petitioner supports its arguments with citations to specific portions of Ortiz
`and testimony from Peter Alexander, Ph.D. Id.
`Patent Owner did not file a reply in support of its Motion. Thus,
`Petitioner’s argument and evidence that substitute claims 1, 2, 11, 14–19,
`and 21 are unpatentable is uncontroverted. As explained below, and based
`on our review of that argument and evidence, we conclude that Petitioner
`has demonstrated by a preponderance of evidence that the combined
`teachings of Karthik, Robinson, and Ortiz render substitute claims 1, 2, 11,
`14–19, and 21 unpatentable as obvious. Accordingly, we deny Patent
`Owner’s Motion to Amend.
`
`
`8 US 2003/0163710 A1, published August 28, 2003 (Ex. 1026, “Ortiz”).
`
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`IPR2019-00855
`Patent 8,799,088 B2
`1. Karthik
`Karthik is titled “Biometric
`Verification for Electronic
`Transactions Over the Web.”
`Ex. 1003, code (54). Karthik
`describes “a method of conducting
`electronic-commerce transactions
`over an unsecured network by
`registering the fingerprints of the
`users and authenticating electronic
`transactions using a ‘biometrics’
`verification technology. In this way,
`each and every transaction on the
`Internet can be secured.” Id. ¶ 53.
`Karthik’s Figure 6, reproduced at
`right, illustrates a process for
`authenticating a credit card
`transaction using stored biometric
`data. Id. at Fig. 6. At step 611,
`previously stored biometric data of
`the credit card owner is compared
`with biometric data obtained from
`the user (whether the card owner or
`otherwise) via a biometric scanner at
`step 607. Id. ¶¶ 151–171.
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`Patent 8,799,088 B2
`The user provides the biometric data retrieved in step 611 during an
`enrollment process. Id. ¶¶ 68–86; see also id. at Fig. 1 (steps 103–109).
`After enrollment, the user may provide additional biometric data to
`Karthik’s database. Id. ¶¶ 99–117; see also id. at Figs. 3a, 3b
`(steps 306–319).
`2. Robinson
`Robinson similarly teaches a system for activating a financial card
`after verifying the identity of the user of the card by comparing the user’s
`biometric data against information stored in a related repository of
`information. Ex. 1004, 2:31–34, 3:33–38, 4:27–31. Figure 2 of Robinson is
`reproduced below.
`
`
`Robinson’s Figure 2, above, is a flow chart illustrating a process for
`enrolling a card presenter in a system for biometric identity verification. Id.
`
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`IPR2019-00855
`Patent 8,799,088 B2
`at 2:22–23. At step 204, Robinson discloses authenticating the biometric
`identification da