Leigh RothschildDownload PDFPatent Trials and Appeals BoardNov 19, 2020IPR2019-00855 (P.T.A.B. Nov. 19, 2020) Copy Citation Trials@uspto.gov Paper 20 Tel: 571-272-7822 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 IPR2019-00855 Patent 8,799,088 B2 2 ’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 35 U.S.C. § References/Basis 1, 2, 11, 14–19, 21 103 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”). IPR2019-00855 Patent 8,799,088 B2 3 § 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 IPR2019-00855 Patent 8,799,088 B2 4 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”). IPR2019-00855 Patent 8,799,088 B2 5 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. IPR2019-00855 Patent 8,799,088 B2 6 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, IPR2019-00855 Patent 8,799,088 B2 7 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. IPR2019-00855 Patent 8,799,088 B2 8 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. IPR2019-00855 Patent 8,799,088 B2 9 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 IPR2019-00855 Patent 8,799,088 B2 10 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 IPR2019-00855 Patent 8,799,088 B2 11 (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 IPR2019-00855 Patent 8,799,088 B2 12 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 IPR2019-00855 Patent 8,799,088 B2 13 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 IPR2019-00855 Patent 8,799,088 B2 14 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 IPR2019-00855 Patent 8,799,088 B2 15 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 IPR2019-00855 Patent 8,799,088 B2 16 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 IPR2019-00855 Patent 8,799,088 B2 17 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. IPR2019-00855 Patent 8,799,088 B2 18 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”). IPR2019-00855 Patent 8,799,088 B2 19 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. IPR2019-00855 Patent 8,799,088 B2 20 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. IPR2019-00855 Patent 8,799,088 B2 21 at 2:22–23. At step 204, Robinson discloses authenticating the biometric identification data provided by the user during enrollment, by “verif[ying] that the biometric data [the user] is presenting for enrollment into the system matches biometric data previously registered with another source” (emphasis added). Id. at 3:33–38. The other source of biometric data may be information stored on the financial card itself, id. at 3:30–33, or information stored in a third party database, id. at 4:27–31. 3. Ortiz Ortiz (Ex. 1026) is titled “Random Biometric Authentication Utilizing Unique Biometric Signatures” and relates to user biometric authentication and methods for enhanced security of electronic systems, including the use of biometric data for authenticating user identity and authorizing transactions. Ex. 1026, code (54), ¶¶ 2, 23. Ortiz discloses methods and systems for biometric authentication in which a “user can be challenged to provide at least one randomly selected biometric attribute. The randomly selected biometric attribute input by the user is automatically compared to a plurality of biometric attributes . . . contained in a user profile.” Id. at code (57). If the randomly selected biometric attribute inputted by the user “matches at least one of the plurality of biometric attributes contained in the user profile[,]” the user “can then be authenticated” and provided “secure user access to . . . transactions.” Id. at code (57), ¶ 24; see also id. ¶ 67 (correlating biometric attributes with biometric data, e.g., fingerprint data). 4. Substitute Independent claims 1, 17, and 21 We address substitute independent claims 1, 17, and 21 together, as they include substantially the same limitations, albeit in different claim formats, e.g., although claim 1 is a “method for verifying the identity of IPR2019-00855 Patent 8,799,088 B2 22 users,” using biometric identification data, claim 17 is drawn to a “system for using biometric identification data,” and claim 21 recites “[a] computer server configured to[] request at least one biometric identification data of a user.” See Ex. 1001, 10:40–48, 11:56–57, 12:46–47 (identifying unchanged portions of original claims). Each of these independent claims includes materially the same “authenticating” limitation. Claim 1 recites a step of “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.” Id. at 10:52–55. Claim 17 recites a system comprising a “remote server further configured for authenticating the uploaded plurality of biometric identification data with biometric identification data stored in a related information repository.” Id. at 12:1–4. Claim 21 recites a “computer server configured to . . . authenticate the uploaded plurality of biometric identification data with biometric identification data stored in a related information repository.” Id. at 12:46–56. We currently discern no material differences among these three recitations of the “authenticating” limitation. Petitioner argues that the combination of Karthik and Robinson teaches each limitation of original claims 1, 17, and 21, including enrolling a credit card user and collecting biometric identification of the user for storage in a database. Pet. 15–22, 29–38, 45–50, 55–58. Petitioner asserts that Karthik describes authenticating a card user’s identity via biometric data “during both enrollment and transaction stages.” Id. at 16. During enrollment, Karthik collects biometric data, e.g., a thumbprint or set of fingerprints, and stores that data in a database at its server. Id. (citing Ex. 1003 ¶¶ 68–83, Fig. 1 (steps 103–109)). Karthik’s system also permits IPR2019-00855 Patent 8,799,088 B2 23 an authenticated user (via originally supplied biometric data) to add more biometric data to her profile that is stored in the database. Id. at 18 (citing Ex. 1003 ¶¶ 99–117, Figures 3a, 3b (steps 314–319)). When a user wishes to conduct a financial transaction, Karthik’s system verifies the user’s identity by comparing biometric information that the user supplies at, e.g., an ATM with the biometric information previously stored in the remote database. Id. at 20–22 (citing Ex. 1003 ¶¶ 193–211, Fig. 8). Petitioner acknowledges that Karthik “does not expressly teach an enrollment protocol where the server authenticates biometric data with biometric data stored in a ‘related information repository.’” Id. at 22. However, Petitioner relies upon Robinson as describing this aspect of original independent claims 1, 17, and 21. Id. at 22–25 (citing Ex. 1004, 2:31–36, 2:48–3:5, 3:9–13, 3:15–38, 4:11–31, 4:41–56, Figs. 1, 2). For example, if a user for whom biometric data does not exist in Robinson’s database attempts to use a financial card, Robinson’s system can retrieve information from a third party repository of biometric data “such as the department of motor vehicles in which the user is registered.” Id. at 24 (citing Ex. 1004, 3:15–38, 4:27–31, 4:41–47). Petitioner also acknowledges that neither Karthik nor Robinson expressly disclose the Decision Limitation. Opp. 20. However, Petitioner contends that Ortiz discloses this concept by describing a system in which the user of a point-of-sale terminal is prompted to input at least one biometric attribute that is randomly selected from a database of previously provided (during enrollment) biometric data. Ex. 1026 ¶¶ 85–87, 90, 91, Figs. 5 (steps 106, 108) 6 (steps 140, 142); Ex. 1027 ¶¶ 38, 39. The security of Ortiz’s systems and methods is enhanced by enabling the system to IPR2019-00855 Patent 8,799,088 B2 24 randomly challenge the user of a point-of-sale terminal at the time of the transaction because an imposter could not know in advance which biometric attribute would be required by the financial service provider to authorize the transaction. Ex. 1026 ¶¶ 23, 87, 96, 97, 141, Figs. 5, 6; Ex. 1027 ¶¶ 40, 41. Petitioner relies on Dr. Alexander’s testimony to support its contention that an ordinarily skilled artisan “would have recognized the need to verify user authenticity, such as, e.g., at least in the first instance when enrolling initial biometric(s), to prevent imposters from accessing Karthik’s system and uploading his own fraudulent biometric data.” Pet. 26; see also id. at 27 (citing Ex. 1002 ¶¶ 139–141; Ex. 1004 2:31–36, 3:33–38). Petitioner reasons that an ordinarily skilled artisan would have been motivated to utilize Robinson’s suggestion to use third party biometric data to verify a user with Karthik’s validation procedure because it “would provide additional security against identity theft.” Id. at 27 (citing Ex. 1002 ¶¶ 139–141). Dr. Alexander opines that an ordinarily skilled artisan would have reasonably expected to be able to incorporate Robinson’s use of third party biometric data into Karthik’s user enrollment protocol. Ex. 1002 ¶ 143. Based on Dr. Alexander’s testimony, Petitioner argues that an ordinarily skilled artisan would have found it obvious to modify the systems and methods suggested by the combined teachings of Karthik and Robinson to incorporate Ortiz’s ability for the financial services provider to decide the type of biometric information required for a transaction (i.e., the Decision Limitation). Doing so would “deter attempts to impersonate the legitimate user of a financial services card during the transaction stage.” Opp. 21–22 (citing Ex. 1027 ¶¶ 40–42). Dr. Alexander also opines that an ordinarily IPR2019-00855 Patent 8,799,088 B2 25 skilled artisan would have expected to succeed in incorporating Ortiz’s system and method into the combined Karthik/Robinson system and method because doing so “would have only required a financial services provider to implement a program that allows a server to randomly select one or more of the plurality of biometrics enrolled in Karthik’s database” and that the “combined methods, systems, and servers [would] work for their intended purpose.” Id. at 22 (citing Ex. 1026 ¶ 27; Ex. 1027 ¶ 43). Patent Owner has not provided any countervailing argument or evidence in response to Petitioner’s Opposition. Based on our review of Petitioner’s argument and evidence of record, which we adopt as our own (see In re NuVasive, 841 F.3d 966, 974 (Fed. Cir. 2016)), we determine that Petitioner has demonstrated by a preponderance of evidence that the combined teachings of Karthik, Robinson, and Ortiz render substitute independent claims 1, 17, and 21 unpatentable as obvious. 5. Substitute Dependent Claims 2, 11, 14–16, 18, and 19 We have reviewed Petitioner’s arguments and evidence pertaining to its challenge that original dependent claims 2, 11, 14–16, 18, and 19, which depend respectively from one of original independent claims 1 and 17, are unpatentable as obvious over Karthik and Robinson. See Pet. 39–40, 50–55. Petitioner further relies upon Ortiz as describing the limitations introduced in the following dependent claims: claim 11, Opp. 24 (citing Ex. 1026 ¶ 34); claims 14 and 15, id. (citing Ex. 1026 ¶¶ 90, 91, Fig. 6); claims 16, 18, 19, id. at 25 (citing Ex. 1026 ¶ 63). See also Ex. 1027 ¶ 51 (analyzing disclosure of Ortiz relating to limitations introduced in dependent claims 11, 14–16, 18, and 19). IPR2019-00855 Patent 8,799,088 B2 26 Patent Owner has not provided any countervailing argument or evidence in response to Petitioner’s arguments relating to substitute dependent claims 2, 11, 14–16, 18, and 19. Based on our review of Petitioner’s argument and evidence of record, which we adopt as our own (see NuVasive, 841 F.3d at 974), we conclude that Petitioner has demonstrated by a preponderance of evidence that the combined teachings of Karthik, Robinson, and Ortiz render substitute dependent claims 2, 11, 14–16, 18, and 19 unpatentable as obvious. G. SUMMARY For all the reasons expressed above, we conclude that Patent Owner has canceled original claims 1, 2, 11, 14–19, 21, and we deny Patent Owner’s Motion to Amend. III. CONCLUSION9 In summary, Motion to Amend Outcome Claim(s) Original Claims Cancelled by Amendment 1, 2, 11, 14–19, 21 Substitute Claims Proposed in the Amendment 1, 2, 11, 14–19, 2110 9 Should Patent Owner wish to pursue further amendments of the challenged claims in a reissue or reexamination proceeding subsequent to the issuance of this decision, we draw Patent Owner’s attention to the April 2019 Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application or a request for reexamination of the challenged patent, we remind Patent Owner of its continuing obligation to notify the Board of any such related matters in updated mandatory notices. See 37 C.F.R. §§ 42.8(a)(3), (b)(2). 10 See Part I.C explaining Patent Owner’s failure to assign new numbers to the substitute claims, its reuse of the existing claim numbers instead, and our IPR2019-00855 Patent 8,799,088 B2 27 Motion to Amend Outcome Claim(s) Substitute Claims: Motion to Amend Granted Substitute Claims: Motion to Amend Denied 1, 2, 11, 14–19, 21 Substitute Claims: Not Reached IV. ORDER For the reasons given, it is: ORDERED, that original claims 1, 2, 11, 14–19, 21 of U.S. Patent 8,799,088 B2 are canceled; FURTHER ORDERED that Patent Owner’s Motion to Amend claims 1, 2, 11, 14–19, 21 is denied; and FURTHER ORDERED because this is a final written decision, the parties to this proceeding seeking judicial review of our Decision must comply with the notice and service requirements of 37 C.F.R. § 90.2. waiver of the requirement to assign new claim numbers for substitute claims because of Patent Owner’s pro se status in the proceeding. IPR2019-00855 Patent 8,799,088 B2 28 PETITIONER: Frank A. DeLucia Andrew O. Larsen MERCHANT & GOULD P.C. fdelucia@merchantgould.com alarsen@merchantgould.com AskeladdenIPR@merchantgould.com PATENT OWNER: Leigh M. Rothschild PRO SE leigh.rothschild@gmail.com Copy with citationCopy as parenthetical citation