Documente Academic
Documente Profesional
Documente Cultură
Jonathan Stroud, Reg. No. 72,518 Roshan Mansinghani, Reg. No. 62,429
jonathan@unifiedpatents.com roshan@unifiedpatents.com
Unified Patents Inc. Unified Patents Inc.
1875 Connecticut Ave. NW, Floor 10 13355 Noel Road, Suite 1100
Washington, D.C., 20009 Dallas, TX, 75240
Telephone: (202) 805-8931 Telephone: (214) 945-0200
v.
IPR2017-01514
Patent 8,799,088
____________
I. INTRODUCTION............................................................................................... 1
II. U.S. PATENT 8,799,088 ................................................................................... 2
A. Summary ................................................................................................. 2
B. Prosecution History ................................................................................. 3
C. Level of Ordinary Skill in the Art ........................................................... 5
III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
42.104 .......................................................................................................... 6
A. Grounds for standing under 37 C.F.R. 42.104(a) ................................. 6
B. Identification of challenge under 37 C.F.R. 42.104(b) and relief
requested............................................................................................... 6
C. Claim construction under 37 C.F.R. 42.104(b)(3)................................ 7
1. a plurality of biometric identification data ................................. 7
IV. THERE IS A REASONABLE LIKELIHOOD THAT THE CHALLENGED
CLAIMS ARE UNPATENTABLE................................................................ 9
A. Ground 1: Karthik in view of Robinson renders claims 1-9, 11-19, and
21 obvious under 103(a) .................................................................... 9
i) Claim 1 ......................................................................................... 14
ii) Claim 2: ....................................................................................... 33
iii) Claims 4-9: ................................................................................. 35
iv) Claim 3 ....................................................................................... 37
v) Claim 11: ..................................................................................... 38
vi) Claims 12 and 13: ....................................................................... 39
vii) Claim 14: ................................................................................... 40
viii) Claim 15: ................................................................................... 40
ix) Claim 16: .................................................................................... 42
x) Claim 17: ..................................................................................... 42
xi) Claim 18: .................................................................................... 45
xii) Claim 19: ................................................................................... 45
xiii) Claim 21: ................................................................................... 46
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B. Ground 2: Karthik in view of Alvarez renders claims 1-9, 11-19, and 21
obvious under 103(a) ....................................................................... 47
i) Claim 1 ......................................................................................... 49
ii) Claims 2, 4-7, 9, 11: .................................................................... 53
iii) Claim 3: ...................................................................................... 54
iv) Claim 8: ...................................................................................... 54
v) Claim 12: ..................................................................................... 55
vi) Claim 13: .................................................................................... 56
vii) Claims 14 and 15: ...................................................................... 56
viii) Claim 16: ................................................................................... 57
ix) Claim 17: .................................................................................... 57
x) Claim 18: ..................................................................................... 59
xi) Claim 19: .................................................................................... 59
xii) Claim 21: ................................................................................... 59
C. Ground 3: Saito renders obvious claim 20 under 103(a) .................... 61
i) Claim 20: ...................................................................................... 62
V. CONCLUSION ............................................................................................... 66
VI. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(A)(1) ....................... 67
A. Real Party-In-Interest ............................................................................ 67
B. Related Matters ...................................................................................... 67
C. Lead and Back-Up Counsel Under 37 C.F.R. 42.8(b)(3) ................... 67
D. Payment of Fees Under 37 C.F.R. 42.103 .......................................... 68
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I. INTRODUCTION
(IPR) of claims 1-9 and 11-21 (the Challenged Claims) of U.S. Patent No.
8,799,088 (the 088 Patent) (EX1001). The 088 Patent generally relates to a
system for using biometric identification to verify the identity of users of financial
biometric data to a server via a website for later use. After enrollment, the user
uploads biometric data at a point of sale to the server during a transaction to allow
the server to compare the uploaded data against the previously stored data to verify
the users identity. Such systems were well known before the 088 Patents 2008
priority date.
initial biometric data provided. It does so by comparing the uploaded data against
other biometric data for the user stored in a related information repository, such
against a third-party source was known in the prior art and would have been an
obvious addition to a biometric verification system. See, e.g., Jones Decl. (EX1003)
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II. U.S. PATENT 8,799,088
A. Summary
identification data to verify the identity of a user of a financial services card, such
as a credit card or debit card. 088 Patent (EX1001) at Abstract, 1:15-18, 4:31-35.
computer and stored in a database server. Id. at 2:11-17. This first step is generally
called enrollment and has long been known in the biometrics industry. Jones
identification and has also long been known in the biometrics industry, including
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In some of the patents embodiments, the uploaded biometric identification
the Department of Motor Vehicles (DMV)) to help prevent identity theft. 088
B. Prosecution History
U.S. Patent Application No. 12/854,598, which issued as the 088 Patent,
Prosecution History (EX1002) at 17-48. The 088 Patent claims priority to a parent
application filed on June 11, 2008, which was abandoned.1 See generally Parent
62. Claims 11 and 17-20 also were rejected as being obvious over Houvener in
1
The claims in the parent application were repeatedly rejected based on the
Houvener and Zoka references discussed herein, as well as others, and eventually
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view of Zoka (U.S. Patent 6,591,249) (EX1010). EX1002 at 62-64. Zoka was
20 as obvious over Houvener in view of Zoka. Id. at 88-96. The applicant argued
that, in Houvener, a human store clerk, rather than a server, compared the
biometric data so that the clerk could be held accountable for the verification. Id. at
least one server, the uploaded plurality of biometric identification data, with a
Houvener, the user, not the server, is the one who authenticates the accuracy of
least one server. Id. at 199-206. In response, the applicant amended claims 1 and
17 to specify that the server authenticates the uploaded biometric data with
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The examiner initially maintained the rejection (id. at 224-232) but this
applicant argued that this limitation required authenticating the uploaded biometric
data against biometric data stored in a third party information repository, e.g., for
the purpose of preventing identity theft. Id. at 240. The applicant argued that, in
Houvener and Zoka, identity verification is only performed once, i.e., during the
purchase transaction at the point of sale, and not during enrollment using a third-
data uploaded by the user with biometric identification data stored in a related
obtain allowance. As discussed below, however, this limitation was known in the
prior art and would have been obvious to a PHOSITA. See infra, e.g., Secs. IV.A.i
& IV.B.i (limitation 1(d)); see also Jones Decl. at 35, 49-50.
A person having ordinary skill in the art (PHOSITA) at the time of the
alleged invention (i.e., June 11, 2008) of the 088 Patent would have been a person
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having the equivalent of at least a bachelors degree in computer science, electrical
Petitioner certifies that the 088 Patent is available for IPR and that
Petitioner is not barred or estopped from requesting IPR of the 088 Patent.
In view of the prior art, evidence, and arguments herein, claims 1-9 and 11-
42.104(b)(1). Based on the prior art references identified below, IPR of these
Exhibit
Proposed Grounds of Unpatentability for the 088 Patent
Nos.
Ground 1: Claims 1-9, 11-19, and 21 are obvious under 103(a)
over U.S. Patent Application No. 2005/0165700 to Karthik
EX1004 and
(Karthik) in view of U.S. Patent No. 7,483,862 to Robinson et al. EX1005
(Robinson)
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Exhibit
Proposed Grounds of Unpatentability for the 088 Patent
Nos.
Ground 2: Claims 1-9, 11-19, and 21 are obvious under 103(a)
over Karthik in view of U.S. Patent No. 7,735,125 to Alvarez et al. EX1004 and
EX1006
(Alvarez)
Ground 3: Claim 20 is obvious under 103(a) over U.S. Patent
EX1007
No. 7,278,025 to Saito et al. (Saito)
Section IV, infra, identifies where each element of the Challenged Claims is
found in the prior art. 37 C.F.R. 42.104(b)(4). The exhibit numbers of the
supporting evidence relied upon to support the challenges are provided above and
the relevance of the evidence to the challenges raised are provided in Section IV.
37 C.F.R. 42.104(b)(5).
The 088 Patent has not expired. As such, the claim terms should be given
42.100(b). Petitioner proposes the following construction. All claim terms not
user. See 088 Patent (EX1001) at claim 1. In contrast, other claims recite
requesting at least one biometric identification data of a user. See id. at claims
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17, 21. The term plurality has a well-understood meaning of two or more.
Dayco Prod., Inc. v. Total Containment, Inc., 258 F.3d 1317, 132728 (Fed. Cir.
2001). Consistent with this meaning, the 088 Patent refers to embodiments that
use just one piece of biometric data. 088 Patent (EX1001) at 9:23-26. The 088
The 088 Patent does describe the option of using a combination of two
But the claim language only recites a plurality of biometric identification data,
require a plurality of types of biometric data here would be improper in the absence
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Thus, the BRI of a plurality of biometric identification data is broad
enough to include at least two or more biometric identification data of the same or
different type.2
The following prior art references disclose each limitation of the Challenged
Claims and render the Challenged Claims unpatentable. Included below are
was published on July 28, 2005 and therefore qualifies as prior art to the 088
Patent under 35 U.S.C. 102(b) (pre-AIA). See Karthik (EX1004). Karthik was
not cited or discussed during prosecution of the 088 Patent. Karthik teaches a
2
Petitioner proposes this construction to prevent Patent Owner from advancing an
plurality of types of biometric data, a concept already well known in the art at the
time. See infra Sec. IV.A.i at [1(b)]; see also Jones Decl. (EX1003) at 31, 42;
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method of verifying the identity of users of financial services, including a process
for enrolling biometric data of a user of a credit card and subsequently verifying
the identity of the user of a credit card during a transaction. Id. at Abstract, 2, 53;
Specifically, Karthik teaches a web site for verifying the identity of a user of
communication with a network that collects biometric identification data from the
user during enrollment and stores it in a database coupled to the server. Id. at 19,
uploading a sample of biometric data collected from the user during a transaction, such
as a credit card transaction, at an ATM, or at a point of sales (POS) system. Id. at 15,
151-152, 166; see also id. at claims 1-3. Karthik then teaches performing a comparison
at the server of the uploaded biometric data to the previously stored data provided
during enrollment to determine a match, and if so, sending a success status validation
signal to the client (such as an electronic commerce application website, POS, or other
claimed invention of the 088 Patent. As mentioned above, the 088 Patent uses
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biometric data to verify the identity of a user of a financial services card, such as a
credit card or debit card. 088 Patent (EX1001) at Abstract, 1:15-35, 4:31-34.
Specifically, the 088 Patent uses an online enrollment process where a user
uploads biometric data to a server via a website so the data may be used for
fraud and identity theft. Id. at 1:31-67; 4:53-5:2; 7:64-8:11. Like the 088 Patent,
commercial transactions, including, for example credit card transactions over the
credit card fraud. Karthik (EX1004) at 2-10, 15, 17-18, 48. Also like the 088
Patent, Karthik provides an online enrollment process where a user uploads biometric
data to a server via a website for later use in verifying the users identity during
transactions, such as a credit card transaction. Id. at 68, 84, 135-136, 151-153, 169-
170. Karthik, therefore, is analogous art to the claimed invention of the 088 Patent.
Karthik teaches that the server component will validate the biometric data
uploaded during enrollment but does not provide further detail regarding this
validation step; nor does Karthik specifically teach that the provided data is
database, as taught by the 088 Patent). Id. at 80. However, U.S. Patent 7,483,862
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to Robinson et al. (Robinson) (EX1005) teaches authentication during
registered user biometric data stored at third-party database); see also id. at 2:62-
3:12, 5:39-44, 6:66-7:28 (describing enrollment of initial biometric data at step 204
at time of pre-purchase). Robinson also teaches that multiple biometric data may be
used, such as by acquiring data from two individual fingers, e.g., a thumb and
index finger, and even teaches that multiple types of biometric data may be used,
such as by acquiring data from a finger and an iris scan; thus, under even an unduly
narrow reading of the claims, Robinson teaches the provision of at least two, i.e.
Robinson was filed on July 25, 2005 and issued on January 27, 2009, and
therefore qualifies as prior art to the 088 Patent under 35 U.S.C. 102(e) (pre-
AIA). See Robinson (EX1005). Robinson was not cited or discussed during
subsequent verification of the users identity against the stored biometric data
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during a redemption transaction to allow the user to securely redeem pre-paid
goods or services associated with the users account. Id. at Abstract, 1:6-30, 6:66-
redemption), Figs. 1-2. As examples, Robinson teaches that its system could allow
pre-purchase of travel packages, event or venue access, or food and drink. Id. at
A user record in the database stores the users enrolled biometric data and
can store other information, such as credit card and debit card information and
point of sale terminal[s], are used to allow the user to input biometric data to
verify the users identity during redemption transactions. Id. at 5:25-38, 7:29-48.
Redemption may also include a credit card transaction if the redemption value is
exceeded. Id. at 8:21-23. Robinson also teaches that its biometric authorization
claimed invention of the 088 Patent. Like the 088 Patent, Robinson teaches a
biometric verification system that allows a user to enroll biometric data that is
uploaded over a network and stored in a database for later use in verification of the
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users identity during subsequent transactions. Also like the 088 Patent, Robinson
allows a user to subsequently input biometric data via a point of sale terminal to
reduce risk of financial loss from theft or fraud. See id. at 2:8-12, 2:34-37,
3:10-12. Robinson, therefore, is analogous art to the claimed invention of the 088
Patent.
i) Claim 1
services cards, such as credit cards, over a network, including a process for
verifying the identity of a user of a credit card during a transaction (Fig. 6), as
shown below:
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Karthik (EX1004) at Figs. 5-6, 2, 15; see also id. at Abstract, 135-170. Karthik
specifically states that its invention relates generally to providing security for
service provider card described by the 088 Patent. Id. at 2, 9, 135-138, 151-155;
see also 088 Patent (EX1001) at 1:57-2:3, 4:31-35. Particularly, Karthik states
that the security solution taught provides authentication to permit world wide
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electronic commercial transactions to be carried out in a highly secured manner
[1(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;
Karthik teaches providing a web site for online enrollment of biometrics data
for new users and/or current users of a credit card. Id. at 68, 135-138, Fig. 5.
at a web site that will later be used to verify the authenticity of a user during
subsequent transactions. Id. at 19, 68, 135-138, see also id. generally at 151-170.
40.
Karthik teaches that a user enters credit card information into the web site
(step 501), after which the web site validates the entered information (step 502) by,
for example, comparing the entered credit card information with the credit card
database. Karthik (EX1004) at 137, Fig. 5; Jones Decl. (EX1003) at 41. These
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Karthik (EX1004) at Fig. 5. If the information is valid, the credit card number or
any other unique identifier (generated or entered by the user) will be sent to the
Id. at 138-139. Karthik notes that the website uses existing authentication
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methods implemented by the website administrator to perform this initial
verification of the identity of the user.3 Id. at Abstract (the server authentication
provider and for receiving existing security parameters entered by the user.),
52, 69-70. Karthik, therefore, teaches verifying the identity of the user of the
financial services provider card via the website and assigning the user a unique
Karthik teaches that more than one fingerprint of the same person or the
fingerprint of all fingers for easy authentication can be used. Id. at 39. A
3
This teaching is consistent with the 088 Patents reference to using a known,
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plurality of biometric identification data of the user under the BRI of this term,
because two or more biometric identification data are being used. 4 Jones Decl.
the various [t]ypes of biometrics methods listed above, Karthik teaches that
[t]he invention may also use the combination of all or some biometrics
used, and claim 2 of Karthik explicitly states that the biometrics data is selected
from one or more of the group consisting of a finger print of one or more fingers
of the user, a palm print of the user, an iris scan of the user, a retina scan of the
user and any other optically distinguishable parameter of the user. Id. at claims 2-
4
As Dr. Jones notes, a PHOSITA also would have known that a single fingerprint
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3 (emphasis added). A PHOSITA, therefore, would have understood that Karthik
require two or more types of such data (e.g. fingerprint and iris). Jones Decl.
which use two or more types of biometric verification, were already well known at
the time. See Jones Decl. (EX1003) at 31, 42; see also Jain (EX1011) at 10
([T]he only obvious solution for building a highly accurate identification system
of two fingers) and a plurality of distinct types of biometric data (e.g., fingerprint
and iris). Robinson (EX1005) at 3:25-31. And a PHOSITA would have found it
by Robinson into the system taught by Karthik for the benefit of the enhanced
known in the art. Jones Decl. (EX1003) at 43, 31. Such a combination would
have been well within the skill of a PHOSITA to achieve, as it would have merely
required repetition of the biometric enrollment already taught by Karthik. Id. at 43.
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Regarding the claimed server, a PHOSITA would have understood
Karthik teaches or at least renders obvious that the request for the biometric data
from the user is by the at least one server (referring to the server hosting the web
site). Jones Decl. (EX1003) at 44. Specifically, Karthik teaches an online process
for enrollment of biometric data initiated via the web site hosted on the server,
compatible with the users web browser (such, as, e.g., ActiveX, a plug-in, or
a Java Applet) to request information from the user. Karthik (EX1004) at 135-
140. After the client component instructions are downloaded in step 504, the
existence of a biometrics scanner is checked and if so, the scanner is activated. Id.
at 137-145; Fig. 5. Then, [i]n [the] case of fingerprint security, the user will be
directed to place their finger on the scanner and in other cases, the user will be
directed to follow the steps provided based on the type of biometrics technology used.
Id. at 146 (emphasis added); see also id. at 77, 110; Figs. 2-3. The biometrics data is
then received by the server, validated, and stored in the database, which resides along
with the website on the server. Id. at 149, 136; see also id. at 80, 68, 115, 100. Any
disconnection with the server will terminate the process. Id. at 149. Because the
enrollment process is conducted online via the website hosted on the server, the
instructions that control this enrollment process, including those that prompt the user to
provide biometric data, are provided by the website hosted on the server, and because a
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disconnection with the server will terminate the process, a PHOSITA would have
understood the request for biometric data during enrollment is by the server, even
though the users browser passes the request on to the user. Jones Decl. (EX1003) at
44. A PHOSITA also would have understood that Karthiks teaching that the
user will be directed to follow the steps provided based on the type of biometrics
technology used (Karthik (EX1004) at 146) to teach a request for any or all
biometrics being used by the server, including, for example, a plurality of fingers
their knowledge, experience, and level of ordinary skill for the server in Karthik to
request the biometric data during the online enrollment process conducted via the
website. Jones Decl. (EX1003) at 45. A PHOSITA would have appreciated that
this was a common and well-known way used in the industry to conduct online
biometric enrollment. Id. It would have been a routine design choice with a
reasonable expectation of success from among a finite set of two options (client or
server), which were listed in industry standards, for the server to control the
process and make the request. Id.; KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007). A PHOSITA would have appreciated that it was beneficial to initiate the
across users and websites, and this would have also eased system configuration and
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updating. Id. A PHOSITA would have also found it beneficial for purposes of
gathers the biometric identification data of a user. Karthik (EX1004) at 29, 142-
examples. Id. at 17, 29-30. Karthik explicitly discusses a finger scanner, but
teaches that steps for uploading biometric identification data differ based on the
type of biometrics technology used. Id. at 77, 146. After the biometric data is
collected during enrollment, the users computing device transmits the data to the
server for storage. Id. at 140, 148-149 ([T]he processed data will be sent to the
inventions server component at the server.), Fig. 5; see also id. at 79-80. A
PHOSITA, therefore, would have understood from these teachings that Karthik
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discloses that the plurality of biometric data collected during enrollment is
transmitted via a network connected computing device to the website. Jones Decl.
(EX1003) at 47.
See supra Sec. II.B; see also 088 Patent (EX1001) at 8:15-35.
Karthik expressly teaches that the server will validate the biometric
identification data after it is uploaded during the enrollment process. But Karthik
does not provide further detail regarding how this validation is performed or
PHOSITA would have found it obvious and beneficial, however, to perform this
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Robinson explicitly teaches connections between the server and one or
(EX1005) at 5:39-44, 10:4-9. Robinson teaches that user biometric data submitted
at 48. As seen below in Figure 1, the third-party database 108 is connected via a
network to the central database 104 in which user records are stored and from
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license database. Id. at 2:62-3:12, 5:39-44, 10:4-9, Fig. 1; Jones Decl. (EX1003) at
48-49.
A PHOSITA at the time of the 088 Patent would have found it obvious to
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48-49. Comparison of biometric identification data with pre-stored biometric
increasing confidence in a users identity and their provided biometric data at the
time of the 088 Patent. Id. A PHOSITA would have been motivated by Karthiks
biometric data were well known at the time, and biometrics industry standards for
performing verification using biometric data for drivers licenses had already been
adopted. Id.; see also EX1020 at 35-54. A PHOSITA would have appreciated that
Karthiks validation step at the server would have beneficially improved Karthiks
system by enhancing the trustworthiness of the biometric data provided by the user
during enrollment and by furthering Karthiks goal of reducing fraud. Jones Decl.
(EX1003) at 50.
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[1(e)] storing the plurality of biometric identification data in a database
coupled to the at least one server; and
Karthik teaches that the uploaded biometric identification data is stored in a
database that resides along with the web site. Karthik (EX1004) at 149, 136; see
also id. at 68, 80. Specifically, Karthik states, The server component will validate
the data sent and will store the biometrics data sent in the database based on the
unique identifier sent by the web-site application. Id. at 149; see also id. at claims 1-3,
Figs. 1 & 5, 80. Further, Karthik describes transmitting the biometric data to a web
server and then storing it in a database. Id. at 19. A PHOSITA would have understood,
therefore, that the database where the biometric data is stored is coupled to the web
biometric identification data provided by the user to the server during a transaction,
solution can be implemented in POS, PC terminals, debit cards, credit cards, etc.),
ATM transactions), Fig. 10; see also id. at claim 1. In a credit card transaction, as
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computer terminal enters credit card details as required by the web-site or other
authentication authorities and the unique identifier for the user, such as their
credit card number, is used to select the appropriate biometric data for the user.
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Id. at Fig. 6, 151-155. After the correct information is retrieved by the server, the
technology used. Id. at 166. When the biometrics data is obtained from the user
in step 608, the client component will process and compress the data and then send
it to the server. Id. at 167-168. Thus, a PHOSITA would have understood that
verification during a purchase transaction. Id. at 151-170, 15, Fig. 6; Jones Decl.
Karthiks express teaching that its security solution can be extended to provide
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security at point of sales (Karthik (EX1004) at 15) to combine Robinsons
Jones Decl. (EX1003) at 53. Mere replacement of the client computing devices
taught by Karthik with the point of sale terminals taught by Robinson would
amount to a simple substitution of known components for their known uses. Id.
Such a combination of Karthik and Robinson would have been within the skill of a
PHOSITA and would not have required undue experimentation, and a PHOSITA
would have appreciated that such a combination would have enhanced both the
security and speed of purchase transactions, which were benefits known in the art.
Id.
biometric identification data to the previously stored data provided by the credit
card user during enrollment to determine a match; and further teaches that if there
is a match, sending from the server a success status validation signal. Karthik
(EX1004) at 169-170, 15, 210-211, Figs. 6, 10; see also id. at claim 1 (status
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While Karthik teaches sending the success or error status to the electronic
the specific context of an electronic commerce credit card transaction (see id. at
151-153, 169-170), Karthik also states that its teachings can be applied in the
have understood that Karthik teaches that the success status signal can be
biometric verification from the server. Jones Decl. (EX1003) at 54. It would have
also been obvious to a PHOSITA based on their knowledge, experience, and level
of ordinary skill to provide the success status signal to the point-of-sale terminal
based on these express teachings of Karthik, because this was the common and
well-known way that such biometric POS systems operated. Id.; see also EX1023
at 15:4-16. And a PHOSITA would have appreciated that a POS terminal that does
not house the database of enrolled biometric data or perform the comparison would
require a notification of a successful match from the server; and it would have
beneficially enhanced security to do so rather than send the enrolled data to the
least renders obvious receiving the validation signal (success status) at the point-
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of-sale terminal. Karthik also teaches or at least renders obvious executing a purchase
transaction at the point of sale terminal. See id. at 15 (point of sales (POS)), 53
added); Jones Decl. (EX1003) at 55. While Karthik does not expressly state that the
purchase transaction is executed, Karthik does explicitly state that further actions are
performed after the success status validation signal is received. Karthik (EX1004) at
exceedingly obvious, that the further actions in a purchase transaction would include
executing the actual purchase transaction at the disclosed point of sale; and such
biometric POS purchase transactions were already well known. Jones Decl. (EX1003)
at 55.
ii) Claim 2:
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constitutes a network connected computing device, and it is connected via a network
to a web server. See supra Sec. IV.A.i at [1(c)]. Karthik further teaches that its
websites that use existing security parameters and existing authentication methods,
which a PHOSITA would have understood teaches or at least renders obvious the
software to initially confirm the users identity as the true user of the credit card.
Karthik (EX1004) at Abstract, 50, 52, 69, 137-138, 213-218; see also id. at Claims 1
For example, Karthik teaches using existing methods of authenticating the user
of a credit card through providing credit card information as a unique identifier, which
is validated against the credit card database, and if valid, the identifier is sent to
authentication process that validates the user that is executed on the third-party
web-site and during which the user enters identification information. Id. at 213-
219. After the user is initially authenticated by the third-party website, the third-
party site is then linked to Karthiks inventions authentication server. Id. at 219.
verifying the user is the true user of the credit card through standard verification
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software provided via a preselected identification verification website. Jones Decl.
(EX1003) at 56. Further, a PHOSITA also would have found it obvious and been
discussed above, and explicitly teaches these six specific common types of data.
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scanning, iris scanning, retina scanning, handwriting analysis,
handprint recognition and voice recognition. The invention may
also use the combination of all or some biometrics technology.
biometric identification data including a fingerprint, retina data, and iris data
were classified and identified based on hand geometry at the time Karthik was filed.
Id.; Jones Decl. (EX1003) at 58. In addition, Robinson expressly discloses using
hand architecture data among its possible biometric data and this also would have
(EX1005) at 3:28-31; Jones Decl. (EX1003) at 59. It would have been obvious to a
Karthiks system, because Karthik expressly teaches that any other optically
distinguishable parameter of the user, i.e., image-based biometric data, could be used.
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for other image-based biometrics disclosed in Karthik that would not have required
data including a signature of the user. Jones Decl. (EX1003) at 58. A PHOSITA
would have also understood that voice recognition teaches using a voice pattern
iv) Claim 3
use a face image of the user, as expressly taught by Robinson. Robinson (EX1005)
at 3:29-31 (teaching use of facial data among other biometric data types); see also
image-based biometric parameter well before the 088 Patent, and it would have
been well within the skill of a PHOSITA to incorporate it into the invention of
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Karthik. Id. Because facial data is another form of image-based biometric obtained
for another; and such a substitution would not have required undue
experimentation. Id. Facial data would have also been an obvious design choice
from among a finite set of biometric options available at the time. Id.
v) Claim 11:
(whether requiring two or more data or two or more types of data), as discussed
above. See supra Sec. IV.A.i at [1(b)] and [1(f)]. As discussed regarding [1(f)], this
prompt can be for the purpose of verifying a point-of-sale transaction. See supra
Sec. IV.A.i at [1(f)]; see also, e.g., Karthik (EX1004) at claim 3 (stating that a
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vi) Claims 12 and 13:
provide biometric data to verify a point-of-sale transaction. See supra Sec. IV.A.i
the transaction because comparing signatures was a well-known and standard type
of biometric handwriting analysis, which uses the same biometric technology. See
supra Sec. IV.A.iii; see also, e.g., Karthik (EX1004) at 17; Jones Decl. (EX1003)
at 58, 61.
biometric data to verify a point-of-sale transaction. See supra Sec. IV.A.i at [1(f)].
facial data for the biometrics technology employed by Karthiks system. See supra
Sec. IV.A.iv; see also, e.g., Robinson (EX1005) at 3:29-31; Jones Decl. (EX1003) at
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60. A PHOSITA would have understood that a biometric verification using facial
recited in claim 13 because facial data comparison would have been understood to be a
14. The method as in claim 1, further comprising accessing, by the at least one
server, the biometric identification data based on an identity of the card.
Karthik teaches that the biometric identification data stored during
enrollment is associated with the users identity using a unique identifier, such as
the users credit card number. Karthik (EX1004) at 136-138, 154; see also id. at
28, 68-71. During a credit card transaction, the credit card number is used by the
performing verification. Id. at 154 ([T]he credit card number may be used as the
identifier and the biometrics data will be stored based on the identifier, so that
during verification the biometrics data is selected using the identifier.); see also
15. The method as in claim 14, further comprising presenting the card to the
point-of-sale terminal to be identified so as to access the at least one server
and access the biometric identification data in the database for an identified
card.
As discussed for claim 14, Karthik teaches accessing the biometric
identification data in the database using the identity of the card as the unique
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identifier to access the data. See supra Sec. IV.A.vii. Further, as previously
and, as also discussed, both Karthik and Karthik in view of Robinson teach and render
obvious a point of sale terminal. See Sec. IV.A.i at [1(f)]; see also, e.g., Karthik
(EX1004) at 15, 9; Jones Decl. (EX1003) at 52, 53. A PHOSITA would have
understood that application of Karthiks solution, which includes using the credit card
obvious by Karthik and Karthik in view of Robinson, would include presenting the card
would have also found it obvious from Karthiks teachings for the card to be presented
to the point-of-sale terminal, e.g. by swiping or inserting it, because this was the most
common way at the time to obtain the credit card identity for use by a server as a unique
identifier needed to access the users acccount. Id. A PHOSITA would have been
apply its solution to a POS system, which almost invariably employed card readers at
the time. Id. A PHOSITA would have also been so motivated based on Karthiks
ATM embodiment teachings in which the user inserts an ATM card, the cards identity
is read, and the card identity is then used by the server to access the appropriate stored
biometric data to use for verification. Karthik (EX1004) at 193-197; see also id. at
198-211, Fig. 10; see also Jones Decl. (EX1003) at 63. A PHOSITA would have
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also appreciated that this would have enhanced Karthiks solution by making it broadly
efficiently obtain credit card information, rather than requiring manual entry of the
credit card number, which was known to be error prone. Jones Decl. (EX1003) at 63.
as discussed for [1(d)]. See Sec. IV.A.i at [1(d)]. Robinsons third party database,
x) Claim 17:
in Sec. IV.A.i.
[1(a)] and [1(b)] and Sec. IV.A.vii at Claim 14. Further, as discussed for Claim 14,
Karthik teaches that the credit card number is used as the unique identifier for the
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user; thus, the card is cross associated with a card identity as claimed. See Sec.
a PHOSITA would have understood that the users computing device running the
web browser and uploading the biometric data during enrollment in Karthik is a
network connected personal computing device. Id.; see also Karthik (EX1004) at
140, 148-149, 15; Jones Decl. (EX1003) at 47. Further, as discussed, Karthik
teaches that the credit card number is used as the unique identifier for storing the
users associated biometric data. See supra Sec. IV.A.i at [1(a)]; see also supra Sec.
[17(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;
Karthik in view of Robinson renders this limitation obvious. See supra Sec.
IV.A.i at [1(d)].
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[17(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
Karthik renders obvious this limitation, and Karthik in view of Robinson
also renders obvious this limitation. See supra Sec. IV.A.i at [1(f)] (POS terminal
prompting user for and then uploading biometric data to remote server); see also
supra Sec. IV.A.vii at Claim 14 (use of card identity) and Sec. IV.A.viii at Claim
Karthik teaches transmitting a unique identifier to the remote server, and Karthik
teaches that this unique identifier can be the card identity. See, e.g., Karthik
(EX1004) at 154-157.
IV.A.i at [1(g)].
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xi) Claim 18:
18. The system as in claim 17, further comprising a second remote server
configured for verifying the users identity to confirm the users identity as
the true user of the financial services card.
Karthik teaches, or at least renders obvious, this limitation through its teachings
relating to using existing methods of initially verifying the users identity through
providing credit card information during enrollment. See supra Sec. IV.A.ii at Claim
2. Karthik teaches checking the credit card identity against the credit card
have understood that this credit card database is housed on a second remote server
that is different from the server storing the biometric data. Jones Decl. (EX1003) at
Third-party Web-Site that can be used to initially authenticate the user as the true user
of the credit card (EX1004 at 213-219, Fig. 9) which would also be understood to
be housed on a second remote server different from the server used for biometric
19. The system as in claim 17, further comprising an external database for
verifying each of the uploaded at least one biometric identification data of the
user.
Karthik in view of Robinson renders this limitation obvious. See supra Sec.
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xiii) Claim 21:
[21(pre)] 21. A computer server configured to:
Karthik teaches this limitation, to the extent it is limiting. See supra Sec.
IV.A.i at [1(a)].
[17(a)].
[21(b)] receive, from a user device, 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;
Karthik teaches this limitation. See supra Sec. IV.A.i at [1(c)]. Further, as
discussed, Karthik teaches that the credit card number is used as the unique
identifier for storing the users associated biometric data. See supra Sec. IV.A.i at
IV.A.i at [1(d)].
[21(d)] store a record of the uploaded at least one biometric identification data
in a database;
Karthik teaches this limitation. See supra Sec. IV.A.i at [1(e)].
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[21(e)] receive biometric identification data for the card for a transaction
from a point-of-sale terminal;
Karthik teaches or renders obvious this limitation, and Karthik in view of
Robinson renders obvious this limitation. See supra Sec IV.A.i at [1(f)].
[21(f)] verify the biometric identification data for the card for a transaction by
retrieving the record of the users biometric identification data record from
the database, determining if the biometric identification data from the point-
of-sale terminal matches the record of biometric identification data retrieved
from the database and sending a validation to the terminal if the biometric
identification data from the point-of-sale terminal matches record of the
biometric identification data retrieved from the database.
Karthik teaches or renders obvious this limitation. See supra Sec. IV.A.i at
[1(g)].
above, Karthik teaches that the server component will validate the uploaded
biometric data during enrollment, but Karthik does not provide further detail
regarding this limitation. Karthik (EX1004) at 149, 80. However, U.S. Patent
6:60-7:15. Alvarez was filed on October 15, 2004, issued on June 8, 2010, and
therefore qualifies as prior art to the 088 Patent under 35 U.S.C. 102(e) (pre-
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AIA). See Alvarez (EX1006). Alvarez was not cited or discussed during
3:35-4:6, Fig. 4. Alvarez further teaches that uploaded biometric identification data
As discussed below, a PHOSITA at the time of the 088 Patent would have
found it obvious to combine the teachings of Karthik and Alvarez to provide the
6
Alvarez has an earlier 102(e) date than Robinson and also expressly recites using
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well-known method of increasing confidence in a determination of a users identity
claimed invention of the 088 Patent. Like the 088 Patent, Alvarez teaches a
biometric verification system that relates to financial services and allows a user
(EX1006) at 6:38-45, 6:64-7:15, Figs. 2-4. Alvarez, like the 088 Patent, uses
loss from fraud losses. See id. at 2:55-59, 3:35-4:6. Alvarez, therefore, is
i) Claim 1
[1(b)]. In addition, Alvarez, like Karthik, teaches that its system can use a plurality
(EX1006) at 7:46-54.
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[1(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;
Karthik teaches this limitation. See supra Sec. IV.A.i at [1(c)].
biometric identification data during the enrollment process, prior to storage of the
data, but does not expressly describe authentication using a related information
verification system that can verify or assist in verifying the identity of a user.
repository) linked to a bank system and/or card transaction processing system that
data.
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associated with a financial services provider card, such as a credit card or stored-
value card. Id. at 7:27-54. The biometric identification data is then verified based
on the comparison of the customer input data with the customer record which was
received from the external verification system or the external system may do the
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2-4; Jones Decl. (EX1003) at 65. Comparison of biometric identification data
biometric data. Id. A PHOSITA would have been motivated to make this
databases, were well known at the time, and biometrics industry standards for the
same had already been adopted. Id.; see also EX1020 at 35-54. A PHOSITA
would have appreciated that this combination would have beneficially improved
by the user during enrollment and by furthering Karthiks goal of reducing fraud.
at [1(f)].
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[1(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;
[1(h)] receiving the validating signal at the point-of-sale terminal and
executing a purchase transaction at a point-of sale terminal.
Karthik teaches or renders obvious these limitations. See supra Sec. IV.A.i
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Karthik teaches or renders obvious these limitations. See supra Sec. IV.A.ii,
iii) Claim 3:
Id. at 5:57-6:11, 7:46-54, Fig. 1. A PHOSITA would have understood that either of
biometric identification data including a face image of the user. Jones Decl.
combine this type of biometric identification data with Karthik based on Karthiks
teaching of the use of any other optically distinguishable parameter of the user,
i.e., image-based biometric data. Id. And it would have amounted to a mere
iv) Claim 8:
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Alvarez teaches using a users signature as biometric data. Alvarez
using a signature of the user as biometric data. Jones Decl. (EX1003) at 67. A
PHOSITA would have found it obvious to combine this type of biometric based on
Karthik teaching use of any other optically distinguishable parameter of the user.
Id. Signature recognition technology was well known at the time of the 088 Patent,
and would have been mere substitution of one well known image-based biometric
for another that would not have required undue experimentation. Id.
v) Claim 12:
transaction. See supra Sec. IV.A.i at [1(f)]. Additionally, Alvarez teaches biometric
identification data including a digital signature. See supra Sec. IV.A.iii at Claim 8.
(EX1003) at 68. Such a process would have yielded the predictable result of an
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instructed workflow for a signature to verify a transaction, and would have been
within the skill of a PHOSITA to achieve without undue experimentation, for the
point-of-sale. Jones Decl. (EX1003) at 69. Such a process would have yielded the
transaction, and would have been a mere substitution of one known image-based
biometric for another that would not have required undue experimentation. Id.
14. The method as in claim 1, further comprising accessing, by the at least one
server, the biometric identification data based on an identity of the card.
Karthik teaches this limitation. See supra Sec. IV.A.vii at Claim 14.
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15. The method as in claim 14, further comprising presenting the card to the
point-of-sale terminal to be identified so as to access the at least one server
and access the biometric identification data in the database for an identified
card.
Karthik teaches or renders obvious this limitation. See Sec. IV.A.viii at
Claim15.
as discussed for [1(d)]. See Sec. IV.B.i at [1(d)]. Alvarezs government database
240 would constitute an external database, as recited in claim 16. See id.
17. A system for using biometric identification data to positively identify users
of financial services card, comprising:
Karthik teaches this limitation. See supra Sec. IV.A.x at [17(pre)].
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[17(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;
Karthik teaches or renders obvious this limitation. See supra Sec. IV.A.i at
[17(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;
Karthik in view of Alvarez renders obvious this limitation. See supra Sec.
IV.B.i at [1(d)].
[17(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
Karthik teaches or renders obvious this limitation. See supra Sec. IV.A.x at
[17(e)].
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[17(f)] wherein the remote server is configured to verify the biometric
identification 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.
Karthik teaches or renders obvious this limitation. See supra Sec. IV.A.i at
[1(g)].
x) Claim 18:
18. The system as in claim 17, further comprising a second remote server
configured for verifying the user's identity to confirm the user's identity as the
true user of the financial services card.
Karthik teaches or renders obvious this limitation. See supra Sec. IV.A.xi at
Claim 18.
19. The system as in claim 17, further comprising an external database for
verifying each of the uploaded at least one biometric identification data of the
user.
Karthik teaches or renders obvious this limitation. See supra Sec. IV.A.ix at
Claim 16.
IV.A.i at [1(a)].
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[21(a)] request at least one biometric identification data of a user associated
with a financial services card, the card being cross associated with a card
identity;
Karthik teaches or renders obvious this limitation. See supra Sec. IV.A.x at
[17(a)].
[21(b)] receive, from a user device, 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;
Karthik teaches this limitation. See supra Sec. IV.A.xiii at [21(b)].
IV.B.i at [1(d)].
[21(d)] store a record of the uploaded at least one biometric identification data
in a database;
Karthik teaches this limitation. See supra Sec. IV.A.i at [1(e)].
[21(e)] receive biometric identification data for the card for a transaction
from a point-of-sale terminal;
Karthik teaches or renders obvious this limitation. See supra Sec. IV.A.i at
[1(f)].
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[21(f)] verify the biometric identification 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 from the point-
of-sale terminal matches the record of biometric identification data retrieved
from the database and sending a validation to the terminal if the biometric
identification data from the point-of-sale terminal matches record of the
biometric identification data retrieved from the database.
Karthik teaches or renders obvious this limitation. See supra Sec. IV.A.i at
[1(g)].
U.S. Patent No. 7,278,025 to Saito et al. (Saito) (EX1007) was filed
September 10, 2003 and issued on October 2, 2007 and therefore qualifies as prior
art to the 088 Patent under 35 U.S.C. 102(e) (pre-AIA). See Saito (EX1007).
Saito was not cited or discussed during prosecution of the 088 Patent.
identification card, which contains an on-board memory for stored biometric data
of the user. Id. at Abstract, 2:1-13. The users identity can be verified using biometric
data, such as fingerprint data, provided at a client terminal, that can be sent to a remote
server for comparison to previously-stored biometric data. Id. at 2:1-13, 2:66-3:4, 8:6-
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i) Claim 20:
[20(pre)] 20. A method for verifying the identity of users of financial services
provider cards over a network, the method comprising:
Saito teaches a method of biometrically verifying the identity of smart card
authentication server. Id. at 2:1-13, 2:66-3:4, Fig. 3. Saito states that among the
Satios card can store Visa, MasterCard, American Express, etc. credit card
such as a financial transaction. See, e.g., id. at 7:5-17, 7:38-49, 2:66-3:22, Fig. 3.
200, which sends the data to an authentication server (e.g., authentication server
204, such as a Fingerprint Authentication Server) that compares the data with
stored data for previously registered users. Id. at 7:6-18, 7:38-49, 8:6-12, 10:18-30,
Fig. 3; see also id. at 10:31-59. Saito teaches that the biometric data can be stored
on the user card for comparison against locally stored biometric data prior to
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transmission to the remote authentication system for verification. Id. at Abstract,
The client terminal includes a fixed card reader into which the card is
inserted, and the card includes a magnetic stripe for backwards compatibility with
older magnetic stripe based terminals. Id. at 4:11-24, 7:50-60. Saito also teaches
that the card can be used as an electronic wallet, that it can store credit card
information, and that the users biometric data can be input to a transactional network
Alternatively, a PHOSITA at the time of the 088 Patent would have found
it obvious and been motivated by the above express disclosures of Saito to use
institutions for completing transactions, etc.). Id. Thus, such a minor modification,
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if any, would not have required undue experimentation, and a PHOSITA would
fingerprint data to a Fingerprint File for the user, and if the data is matched the
Saito (EX1007) at 10:25-30, see also id. at 10:31-59, 16:46-66. Saito also teaches
that the Fingerprint Authentication Server can validate[] the Users identity to
both the Client Terminal 200 and to the Application Server 202 in response to a
successful match. Id. at 11:3-7. Thus, Saito teaches or at least renders obvious
sending a validation signal from the server to the client terminal if the uploaded
biometric data matches the biometric data previously stored at the server. Jones
would also be received at the client terminal. Jones Decl. (EX1003) at 71. The
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includes functionality for conducting a transaction after the users identity has
been verified by the authentication server. Saito (EX1007) at 7:10-17, 7:37-41; see
module 216); 10:28-30 ([I]f the data is matched the Authentication Server sends
that the captured biometric data and cardholder identity is input to a transactional
As discussed, Saito also teaches that its card may be used as an electronic wallet
and can store Visa, MasterCard, American Express, etc. credit card information. Id.
at 17:13-38, 17:65-18:2. For these reasons and those discussed with regard to limitation
[20(a)] above, a PHOSITA would have understood that the user can execute a purchase
authentication server. See supra Saito as applied to [20(a)]; Jones Decl. (EX1003) at
72.
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V. CONCLUSION
Petitioners respectfully request that claims 1-9 and 11-21 of the 088 Patent
be canceled.
Respectfully submitted,
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VI. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(A)(1)
A. Real Party-In-Interest
proceeding, the filing of this petition, or the conduct of any ensuing trial.
B. Related Matters
The 088 Patent has been the subject of the following patent infringement
lead and back-up counsel. 37 C.F.R. 42.8(b)(3) and (b)(4). Jason Mudd will serve
as lead counsel. Roshan Mansinghani will serve as primary back-up counsel. Eric
Buresh and Jonathan Stroud will serve as additional back-up counsel. Please direct
7
Rothschild Biometric Systems, LLC purports to hold itself out as the current
assignee of the 088 Patent, however, USPTO assignment records still list SRR
Patent Holdings, LLC as the current assignee. Petitioner, therefore, has identified
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addresses: jason.mudd@eriseip.com, eric.buresh@eriseip.com, ptab@eriseip.com,
42.8(b)(4).
this Petition authorizing the Office to charge fees required under 37 C.F.R.
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APPENDIX OF EXHIBITS
CERTIFICATE OF COMPLIANCE
Further, a courtesy copy of this Petition for Inter Partes Review was sent via
e-mail to Patent Owners litigation counsel:
Hao Ni
hni@nilawfirm.com
Timothy T. Wang
twang@nilawfirm.com
Neal G. Massand
nmassand@nilawfirm.com
Stevenson Moore V
smoore@nilawfirm.com
Krystal L. McCool
kmccool@nilawfirm.com
NI, WANG & MASSAND, PLLC
8140 Walnut Hill Ln., Ste. 500
Dallas, TX 75231