IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Examiner:
`
`Tarae, Catherine Michelle
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`Art Unit:
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`3992
`
`In re application of: Giobbi
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`U.S. Patent No.:
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`8,352,730
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`Issued:
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`January 8, 2013
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`Application No.:
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`11/314,199
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`Filed:
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`December 20, 2005
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`Title: BIOMETRIC PERSONAL DATA
`KEY (PDK) AUTHENTICATION
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`PATENT OWNER RESPONSE
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`Mail Stop Ex Parte Reexam
`Attn: Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313
`
`Dear Commissioner:
`
`Proxense, the ownerof U.S. Patent 8,352,730 (“730 Patent”) hereby responds to the Order
`
`Granting Ex Parte Reexamination Petition. For the reasons described herein, these Reexamination
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`proceedings should be terminated.
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`Patent Owner Exhibit 2024, Page 1 of 11
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`Patent Owner Exhibit 2024, Page 1 of 11
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`TABLE OF CONTENTS
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`I.
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`Construction of “Third-Party Trusted Authority” 000.000.0000. cee cet ete eet teeseenteenneey 3
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`Il.=The Prior Art (Alone or in Combination) Does Not Include a “Third-Party Trusted
`AUTOTIty” ooocen nec eee E LEE EOL fete de cit ttbetttitecidestieetirtititectieenreneey 4
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`A.
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`B.
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`C.
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`Ludtke Does Not Disclose a “Third-Party Trusted Authority”... 0. ceeeceeeeeeeee 5
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`Okereke and Robinson Do NotDisclose a “Third-Party Trusted Authority”........ 10
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`Scott Does Not Disclose a “Third-Party Trusted Authority” ....... eee esters 10
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`THT.=Conclusion oe. ceee cece eeceeeeeceeesseeeeesseseeteeeeeesseeseeseesseeteeseseeseesseetsesseeteeeseeeeenees 11
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`2
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`Patent Owner Exhibit 2024, Page 2 of 11
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`Patent Owner Exhibit 2024, Page 2 of 11
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`Pursuant to 37 CFR 1.530 and 35 U.S.C. 304, Patent Ownerrespectfully submits this
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`patent ownerstatement.
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`At bottom, the patent claims of U.S. Patent No. 8,532,730 are patentable considering the
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`cited prior art patents and printed publications alone or in any reasonable combination.
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`Specifically, none of the prior art discloses a “third-party trusted authority” as that term has been
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`construed by the Patent Trial and Appeal Board (“PTAB”).
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`I.
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`CONSTRUCTIONOF “THIRD-PARTY TRUSTED AUTHORITY”
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`“During reexamination ordered under 35 U.S.C. § 304 ... claims are given the broadest
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`reasonable interpretation consistent with the specification”. MPEP § 2258(1)G). “Under a
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`broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning,
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`unless such meaningis inconsistent with the specification”. MPEP § 2111.01(1). Accordingly,
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`during reexamination, terms of the claim are typically given their plain meaning. With respect to
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`the ‘730 Patent, the PTAB hasalready ruledasto the plain meaning of “third-party trusted
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`authority” and thus decided the broadest reasonable interpretation of the claims.
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`In particular, the PTAB foundthat “[t]he plain meaning of ‘third-party trusted authority’
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`suggests an entity or party separate from the principal parties to a transaction”. Samsung
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`Electronics America, Inc. v. Proxense, LLC, TPR2021-01444, Paper 11 at 14 (PTAB February
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`28, 2022). The PTAB further noted such wasconsistent with specification — noting Figure 3
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`“depicts trusted key authority 320 as an entity separate from biometric key 100, authentication
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`module 310, and application 330”. /d. Accordingly, the PTABinterpreted the plain meaning of
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`“third-party trusted authority” consistent with the specification to be “a trusted authority that is
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`an entity separate from the parties to a transaction”. /d, at 15. As the plain meaning defines the
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`broadest reasonable interpretation consistent with the specification, the PTAB hasalready
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`Patent Owner Exhibit 2024, Page 3 of 11
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`Patent Owner Exhibit 2024, Page 3 of 11
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`

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`determined the broadest reasonable interpretation of “third-party trusted authority” and,
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`therefore, the construction of the term to be applied in this reexamination.
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`The PTAB also determined how the broadest reasonable interpretation of “third-party
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`trusted authority” is to be applied when evaluating prior art. Whendistinguishing the claim 1
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`from the prior art, the PTAB noted “the DPC appears to be whatis being accessed, as the payee
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`and payor, with the PIA, accessalist of financial accounts from the DPC. Here, the DPC is the
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`resource to be accessed, but it is a party to the transaction, rather than a third-party”. /d, at 26
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`(internal citations omitted). Accordingly, under the broadest reasonable interpretation, a third-
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`party trusted authority cannot be what is being accessed. The purported substantial new
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`questions of patentability that is identified fail to account for a third-party trusted authority,
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`which cannotbe the system being accessed.
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`I.
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`THE PRIOR ART (ALONEOR IN COMBINATION) DOES NOT INCLUDE A
`“THIRD-PARTY TRUSTED AUTHORITY”
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`Claim 1 recites the action of “wirelessly sending one or more codes form the plurality of
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`codes and other data values for authentication by an agent thatis third-party trusted authority
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`possessing a list of device ID codes uniquely identifying legitimate integrated devices”.
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`Similarly, claim 8 recites “a verification unit ... wirelessly sends one or more codes form the
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`plurality of codes and other data values for authentication by an agent thatis a third-party
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`trusted authority possessing a list of device ID codes uniquely identifying legitimate integrated
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`devices.” Claim 15 also requires the presence of a componentthat sendsto a third-party trusted
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`authority, reciting “an authentication unit ... send the plurality of codes and the other data values
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`to an agent for authentication to determine whether the one or more codes and the other data
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`values are legitimate, wherein the agentis a third-party trusted authority possessingalist of
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`device ID codes uniquely identifying legitimate integrated devices.” Thus claims 1, 8, and 15
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`Patent Owner Exhibit 2024, Page 4 of 11
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`Patent Owner Exhibit 2024, Page 4 of 11
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`

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`require the action of sending to a third-party trusted authority or the presence of a component
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`carrying out such action.
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`Instead of sending to a third-party party trusted authority, claims 12 recites “receiving
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`one or more codes from a plurality of codes and other data values including a device ID code...
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`the device ID code being registered with an agent thatis a third-party trusted authority
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`possessing a list of device ID codes uniquely identifying legitimate integrated devices.” Claim
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`12 thus requires receiving a device ID code registered with a third-party trusted authority.
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`A.
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`Ludtke Does Not Disclose a “Third-Party Trusted Authority”
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`Regardless of sending or receiving, each of the independent claims at issue require
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`communicating with a third-party trusted authority that, under the broadest reasonable
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`interpretation, is not the system being accessed. In finding substantial new questions of
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`patentability, the Examineridentified the transaction privacy clearing house (TPCH) of Ludtke
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`(U.S. Patent No. 7,188,110) as the third-party trusted authority. Specifically, the Examiner noted
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`the “the transaction device information is provided to the TPCH 110 that then indicates to the
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`vendorand the user approval of the transaction to be performed”and that “the transaction
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`privacy clearing house maintains a secure database of transaction device information.” Decision
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`on Requestfor Ex Parte Reexamination, mailed August 2, 2022, at 8-9. Thoughnotspecifically
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`identifying the TPCH asthe third-party trusted authority, the Examiner appearsto be referencing
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`the list of device ID codes possessedby a third-party trusted authority and a communication with
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`a third-party trusted authority as recited in the claims. In so doing, the Examiner appears to
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`equate the third-party trusted authority with the TPCH. However,just like the DPC of Laps/ey,
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`the TPCH of Ludtke is the system being accessed by the payee and payor; the TPCH
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`authenticates the transaction andsettles the funds and thusis not a third-party trusted authority.
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`Patent Owner Exhibit 2024, Page 5 of 11
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`Patent Owner Exhibit 2024, Page 5 of 11
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`Whenattempting to purchase goods, the TPCHis accessed by the userto transfer the
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`appropriate financial credit into the vendor’s account. This is shown in clearly in Ludtke ’s
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`Figures 16 and 17 (reproduced below).
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`CLERK
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`RETAIL POS
`TERMINAL
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`TPCH
`
`VENDOR
`
`1601
`DISPLAY CURRENT TOTAL
`
`PRIVACY
`CARD
`
`3}
`
`DIGITAL
`WALLET
`
`i}
`
`USER
`
`ii
`
`PEeemeacermaeeeeeeeeeeeeeeeee.
`aN1618 RETURNECARD & PAPER @aCEIRThi
`
`d
`
`Oooeeeaeeee
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`‘
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`RETATRANSACTION
`
`FIG. 1 6
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`Patent Owner Exhibit 2024, Page 6 of 11
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`iii3}tt't'
`
`eeeeheee
`
`vhucoeerunouasdPURCHASE
`
`
`1862 fun
`{
`1803 REQUESTPAYMENT
`;
`eeeneesnenSen
`| 1604TRIGGERPAYMENT WITH ECOUPONS
`11605REQUESTAlAUTHORIZATION & INFO
`‘iets PROVIDE FINGERPRINT, ECOUPON SELECTION
`1 1607 DISPLAY ECHUPONS
`[ene
`!
`1 1809 REQUEST CARD
`11608 SCAN BARCODES
`t
`(1649 SELECTACCOUNT
`eeoeeeoe
`$1611 SEGURE EXCHANGE, PROGRAMMAG STRIPE
`3
`Rd
`1612 READY TO UBE
`hepteeonenne—reemaanannncel
`£1613 REMOVE CARO. HAND TO CLER
`mt 1B SWIPE CAR
`F645 TRANSACTEiGN REQUEST: PURCHASE RECORD, ACCOUNT INFO
`1
`1 1616, 1817 TRANSACTION CONFIRMATION
`t
`;
`IS19/SETTLE FUNDS, DATA MINING INFO
`Posiaenseensestotenneneiereetiy
`3620 ELECTRONIC RECEIPT VIA INTERNET
`
`
`i §
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`t '
`
`$ifI
`
`Oneeenee
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`Patent Owner Exhibit 2024, Page 6 of 11
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`

`

`VENDOR
`
`Tesm.petsStteteeStteSetbSAOaetateerenreAetyOkteseHette
`
`tataeheeaaeaayleaahat
`eheatSenaAneeeicapyneeaepemeeae
`NieattteesentnetiateSe
`seehaia
`
`{I
`
`6 USER VALIGATED
`__ACCOUNT DATA
`
`111 '
`
`'
`9-17 TRANSACTION CONFIRMATION
`
`:j i
`
`tt
`
`t
`t
`i
`!
`}
`t
`
`j
`i CONTENT
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`tpsseoenneromaasebrenaumnooroeny
`t
`fetae
`
`Fe SECURECONTENTDISTRIBUTION i
`_
`ap
`Aeea
`14 CONFIRMATION OF RECEIPT
`1
`i
`i
`j
`j
`q
`
`4 SETTLE FUNDS)
`Peer’
`neiete
`
`WEB TRANSACTION
`
`FIG : | f
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`Figures 16 and 17 of Ludtke detail use of the TPCHin retail and web transactions,
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`respectively. The transactions involve access of the TPCH by a user via a POS terminal. As
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`described in Ludtke, “the POS terminal may collect the necessary information from the
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`transaction device, e.g., digital wallet, combine it with the purchase data, and sendit to the
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`TPCH. The TPCH maythen authorize the transaction, store data relevantto the transaction inits
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`records andtrigger a financial transfer to the vendor’s account.” Ludtke, 23:50-55; see alsoid.,
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`21:51-57 (“In one embodiment, a POS terminalis the link betweenthe digital wallet or privacy
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`card and the transaction privacy clearing house (TPCH)of the eCommerce system.”). The main
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`purpose of Ludtke’s POS terminalis to establish a secure transaction connection between the
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`Patent Owner Exhibit 2024, Page 7 of 11
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`BROWSER
`DIGITAL
`:
`WALLET
`i
`;
`¢ TRIGGER PURCHASE
`rerenni
`2 REQUEST PURCHASE}
`PROVIDE PURCHASE RECGAD
`i
`{ SVALIDATE USES, GET ACCOUNT INFO
`'4 REQUEST FINGERPRINT,
`ACCOUNTsoAcaeuiSELEGTON
`
`§ PROVIDEFINGERPRINT,
`ACCOUNT SELECTION
`|
`1
`
`USER
`
`PPOS
`TERMINAL
`
`TPCH
`
`eeeres
`
`7 TRANSACTION reouesr
`PURCHASE RECORD, OW 10,
`|_ACCOUNT INFO
`t
`| 8 TRANSACTION3
`4QNFIBMATION|
`
`Patent Owner Exhibit 2024, Page 7 of 11
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`

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`transaction device and the TPCHandtotransfer transaction data to the TPCH for completion of
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`the transaction.
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`Accordingly, as shown by step 1615 in Figure 16 of Ludtke, “the retail POS terminal
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`establishes a secure connection with the TPCH,and requests that the transaction be carried out.”
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`Ludtke, 27:56-58. Prior to this, as shown by steps 1611, 1613 and 1614, the POS receives data
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`from the digital wallet via the magnetic stripe on a privacy card interfaced with the digital wallet
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`and then POS. Duringa retail transaction, therefore, the POS receives data from the digital
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`wallet and then the “POS terminal establishes a secure connection with the TPCH,and requests
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`that the transaction by carried out, step 1615.” Ludtke, 27:56-58. After receiving the request and
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`sending a confirmation messageto the POS at step 1616, the process moves on to step 1619
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`where“the TPCHsettles funds, transferring the appropriate amount into the vendor’s account”.
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`Ludtke, 27:66-67. The TPCH, whichtransfers funds into the vendor’s account, is the same
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`system being accessed by the user to pay the merchant—and therefore cannot be the claimed
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`“third-party trusted authority.”
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`A similar process for web transactions is shownin Figure 17 of Ludtke. However,
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`instead of receiving data from the digital wallet via a magnetic stripe on a privacy card, the POS
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`“communicates with the transaction device, asking the transaction device to validate the user,
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`confirm that the user wants to make this transaction, and get the appropriate information for
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`which account the user wants to use for payment.” Ludtke, 28:58-62. This is shown bystep 6 in
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`Figure 17. “When information on the user’s side of the transaction has been set up to perform a
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`transaction, the personal POS terminal opens a secure communication session to the TPCH,
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`requesting a transaction. The personal POS terminal provides the transaction record thatit
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`received from the web browserand the unique ID of the transaction device. The TPCH uses the
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`Patent Owner Exhibit 2024, Page 8 of 11
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`Patent Owner Exhibit 2024, Page 8 of 11
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`unique ID ofthe transaction device to process the transaction.” Ludtke, 29: 6-14. Thus, as
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`shownbystep 7 of Figure 17, the POS collects the necessary information from the transaction
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`device, e.g., digital wallet, combines it with the purchase data, and sends it to the TPCH. The
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`TPCHthensettles funds, as shownby step 15.
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`“The settlement of funds involves the transfer of the appropriate financial credit into the
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`vendor’s account.” Ludtke, 29:35-36. As shown in Figures 16 and 17, the settlement of fundsis
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`handled by the TPCH. Settlement(i.e., transfer of funds) is one of the core functionalities of the
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`TPCH. “The TPCHagent 615 handles system management and policy control and forms the
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`corefunctionality of the TPCH 600... Among the responsibilities handled by the agent include
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`internal system managementfunctions, such as data mining, financial settlement and allocation
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`ofpayments to internal and external accounts, and registration of new user joining the system.”
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`Ludtke, 9:43-51. The TPCH is tendering paymentto the vendor by taking funds from the user’s
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`account and transferring to the vendor’s account. Consequently, the TPCHis the system being
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`accessed to tender payment to the vendor — and not the claimed “third-party trusted authority.”
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`As noted supra, the PTAB has already determined the broadest reasonable interpretation
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`of “third-party trusted authority”, under which a third-party trusted is not the system being
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`accessed. The PTAB held the plain meaning of “third-party trusted authority” — which defines
`
`its broadest reasonable interpretation — is “an entity or party separate from the principal parties to
`
`a transaction”. IPR2021-01444, Paper 11 at 15. The TPCH, however,is the resource to be
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`accessed to tender payment, makingit a party to the transaction. Based on similarinteractions,
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`the PTAB held Zaps/ey’s DPC, usedto access a list of financial account, is not a third-party
`
`trusted authority because it is the system being accessed. /d. at 26-27. Thus, because Ludtke ’s
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`TPCHis the system being accessed to tender payment,it is not a third-party trusted authority
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`Patent Owner Exhibit 2024, Page 9 of 11
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`Patent Owner Exhibit 2024, Page 9 of 11
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`under what the PTAB hasdeterminedto be the broadest reasonable interpretation. As such,
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`Ludtke does not disclose or suggest the claimed “third-party trusted authority.”
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`B.
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`Okereke and Robinson Do Not Disclose a “Third-Party Trusted Authority”
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`The Examinerhas not pointed to the teachings of Okereke (U.S. Publication No.
`
`2003/0196084) or Robinson (U.S. Publication No. 2003/0177102) as raising substantial new
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`questions of patentability with respect to a third-party trusted authority. Accordingly, neither
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`Okereke nor Robinson, alone or in combination, discloses or suggests the claimed third-party
`
`trusted authority.
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`C.
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`Scott Does Not Disclose a “Third-Party Trusted Authority”
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`With regards to Scott (WO 9956429 A2), the PTAB specifically held Scott fails to
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`disclose a third-party trusted authority. IPR2021-01444, Paper 11 at 24-25. While, this finding
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`may not have been presented in final written decision, it was a final determination ending the
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`proceedings. A final determination, therefore, was made by the PTAB with respect to Scott's
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`failure to disclose a third-party trusted authority. In view of this determination, and in point of
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`fact, Scott does not disclose components for or actions of communicating with a third-party
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`trusted authority as recited in the claims.
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`10
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`Patent Owner Exhibit 2024, Page 10 of 11
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`Patent Owner Exhibit 2024, Page 10 of 11
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`I.
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`CONCLUSION
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`In view of the foregoing, the substantial new questions of patentability that are identified
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`by the Examiner do notestablish questions regarding components for or actions of
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`communicating with a third-party trusted authority, and thus do not address all the limitations of
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`the claims. In addition to not addressingall the limitations of the claims, the substantial new
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`questions of patentability do not demonstrate the claims at issue are either anticipated or
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`rendered obvious by Ludtke, Okereke, Robinson, or Scott, alone or in combination. Termination
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`of these proceedings, therefore, is respectfully requested.
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`DATED: November2, 2022
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`Respectfully Submitted,
`
`Hard IP LLC
`
`/Kinza Hecht/
`Kinza Hecht
`Patent Agent
`Reg. No. 62,325
`Phone: (212) 321-0598
`Email: kinza@hard-ip.net
`
`11
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`Patent Owner Exhibit 2024, Page 11 of 11
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`Patent Owner Exhibit 2024, Page 11 of 11
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