Leigh Rothschild

Patent Trials and Appeals Board

Nov 19, 2020

IPR2019-00855 (P.T.A.B. Nov. 19, 2020)

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
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’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”).
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§ 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
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suspend that practice in this proceeding, and we interpret Patent Owner’s
non-contingent Motion as canceling original claims 1, 2, 11, 14–19, and 21
and presenting amended versions of those claims with the same numbering.
We, therefore, review the patentability of the newly presented amended
versions of claims 1, 2, 11, 14–19, and 21.
D. THE ’088 PATENT
The ’088 patent, titled “System and Method for Verifying User
Identity Information in Financial Transactions,” relates generally to a system
for applying for, receiving, and verifying the authenticity of a “financial
services provider card,” e.g., a credit card. Ex. 1001, code (54). More
specifically, the ’088 patent describes a way to verify a card user’s identity
during a purchase transaction, using biometric data stored on a remote
server. See id. at 4:43–5:2.

all changes relative to the original claim clearly discussed.” Office Patent
Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012) (“Practice
Guide”). “Any claim with a changed scope subsequent to the amendment
should be included in the claim listing as a proposed substitute claim, and
should have a new claim number.” Lectrosonics, Inc. v. Zaxcom, Inc., Case
IPR2018-01129, Paper 15, 8 (Feb. 25, 2019) (precedential) (“Lectrosonics”).
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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.
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network 100 includes point of sale terminal 102 including card swipe
reader 120 for completing a purchase transaction. Id. at 5:4–9, 6:32–35.
The ’088 patent describes a user applying for a credit card on the
financial services provider website via user terminal 112. Id. at 7:6–10.
Once approved, for security purposes, “the financial service provider
requests the user to provide biometric identification data specific only to the
user.” Id. at 7:21–23. The biometric data may include “physical features
such as face, fingerprint, iris, retina, or hand geometry, or behavioral
features, such as signature, voice, or gait.” Id. at 7:29–31. The biometric
data is stored in database 115 on remote server 114. Id. at 8:40–43. In one
embodiment, the financial services provider may choose to verify the
entered biometric data with a third party; for example, “fingerprint scans,
digital photographs, DNA fingerprints, etc., . . . can be checked with some
government agencies such as the Department of Motor Vehicles (DMV).”
Id. at 8:19–22.
When the user wishes to use the approved financial services card at a
transaction at point-of-sale terminal 102, the user swipes the card and
“inputs the required biometric identification data into display/touch screen
126 or 125.” Id. at 9:20–23. Before allowing the transaction to proceed, a
“verification (step 410) is made by comparing the biometric identification
data entered into the point-of-sale terminal 102 with the biometric
identification data that is stored in the network connected remote server 114
database 115.” Id. at 9:56–60. The system executes the transaction after the
user’s biometric identification data is verified. Id. at 10:30–31.
Of the proposed substitute claims, claims 1, 17, and 21 are
independent. Id. at 10:40–13:3; see Mot. 8–12. Dependent claims 2, 11, 14,
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15, and 16 depend directly from substitute claim 1, Ex. 1001, 11:4–55, and
dependent claims 18 and 19 depend directly from substitute claim 17, id.
at 12:22–28. Substitute claim 1, which is representative, recites:
1 (amended). A method for verifying the identity of users of
financial services provider cards over a network, the method
comprising:
[A] providing a web site for verifying the identity of a user of a
financial services provider card, the web site being hosted by
at least one server in communication with the network;
[B] requesting, by the at least one server, a plurality of biometric
identification data of the user;
[C] uploading the plurality of biometric identification data of the
user requested by the at least one server via a network
connected computing device to the web site;
[D] authenticating, by the at least one server, the uploaded
plurality of biometric identification data with a biometric
identification data stored in a related information repository;
[E] storing the plurality of biometric identification data in a
database coupled to the at least one server; and
[F] uploading biometric identification data provided by the user
at a point-of-sale terminal to the at least one server wherein
the financial services provider decide the type of biometric
identification data required for the transaction;
[G] determining, by the at least one server, if the biometric
identification data provided by the user at point-of-sale of the
terminal matches the biometric identification data retrieved
from the database and sending a validation signal to the
terminal if the biometric identification data provided by the
user at point-of-sale of the terminal matches the biometric
identification data retrieved from the database;
[H] receiving the validating signal at the point-of-sale terminal
and executing a purchase transaction at a point-of sale
terminal.
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Mot. 8–9; see also Opp. 4–5; Pet. 46–50 (reflecting labels used by Petitioner
to ease discussion).
The underlined phrase in element 1F above reflects the proposed
amendment to claim 1. Mot. 9. The same phrase is added to substitute
independent claims 17 and 21. See id. at 9 (element 17A as amended), 11
(element 21A as amended). Patent Owner does not remove any language
from the original independent claims 1, 17, and 21. Id. at 9–12.
II. ANALYSIS
A. CLAIM INTERPRETATION
We interpret claims in the same manner used in a civil action under
35 U.S.C. § 282(b) “including construing the claim in accordance with the
ordinary and customary meaning of such claim as understood by one of
ordinary skill in the art and the prosecution history pertaining to the patent.”
See Changes to the Claim Construction Standard for Interpreting Claims in
Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
51,340, 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b)
effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b)
(2019).6 Only terms that are in controversy need to be construed, and then
only to the extent necessary to resolve the controversy. Nidec Motor Corp.
v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir.
2017).
Petitioner addresses a number of phrases recited in the original claims,
Pet. 11–13, and Patent Owner does not address the meaning of any of those

6 This rule change applies to the instant Petition because it was filed after
November 13, 2018. See id.
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phrases, see Mot. 4 (not addressing patentability of original claims).
Because no dispute currently exists regarding the meaning of any language
in the original claims, we apply the legal standards set forth above when
reading that language without explicitly construing any claim language.
Petitioner contends that the new language proposed by Patent Owner
for substitute independent claims 1, 17, and 21 is indefinite because it is
“amenable to multiple interpretations.” Opp. 5–6. We address Petitioner’s
argument and interpret that new language in Part II.D below.
B. LEGAL STANDARDS
In an inter partes review, amended claims are not added to a patent as
of right, but rather must be proposed as a part of a motion to amend.
35 U.S.C. § 316(d). The Board must assess the patentability of proposed
substitute claims “without placing the burden of persuasion on the patent
owner.” Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1328 (Fed. Cir. 2017)
(en banc); see also Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-001129,
Paper 15 at 3–4 (PTAB Feb. 25, 2019) (precedential). Subsequent to the
issuance of Aqua Products, the Federal Circuit issued a decision in Bosch
Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017)
(“Bosch”), as well as a follow-up Order amending that decision on
rehearing. See Bosch Auto. Serv. Sols., LLC v. Iancu, No. 2015-1928 (Fed.
Cir. Mar. 15, 2018) (Order on Petition for Panel Rehearing).
In accordance with Aqua Products, Bosch, and Lectrosonics, a patent
owner does not bear the burden of persuasion to demonstrate the
patentability of the substitute claims presented in the motion to amend.
Rather, ordinarily, “the petitioner bears the burden of proving that the
proposed amended claims are unpatentable by a preponderance of the
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evidence.” Bosch, 878 F.3d at 1040 (as amended on rehearing); see
Lectrosonics, Paper 15 at 3–4. In determining whether a petitioner has
proven unpatentability of the substitute claims, the Board focuses on
“arguments and theories raised by the petitioner in its petition or opposition
to the motion to amend.” Nike, Inc. v. Adidas AG, 955 F.3d 45, 51 (Fed. Cir.
2020). The Board itself also may justify any finding of unpatentability by
reference to evidence of record in the proceeding. Lectrosonics, Paper 15
at 4 (citing Aqua Products, 872 F.3d at 1311 (O’Malley, J.)).
Notwithstanding the foregoing, Patent Owner’s proposed substitute
claims must meet the statutory requirements of 35 U.S.C. § 316(d) and the
procedural requirements of 37 C.F.R. § 42.121. Lectrosonics, Paper 15
at 4–8. Accordingly, Patent Owner must demonstrate: (1) the amendment
proposes a reasonable number of substitute claims; (2) the proposed claims
are supported in the original disclosure (and any earlier filed disclosure for
which the benefit of filing date is sought); (3) the amendment responds to a
ground of unpatentability involved in the trial; and (4) the amendment does
not seek to enlarge the scope of the claims of the patent or introduce new
subject matter. See 35 U.S.C. § 316(d); 37 C.F.R. § 42.121.
The Supreme Court in KSR International Co. v. Teleflex Inc., 550
U.S. 398 (2007), reaffirmed the framework for determining obviousness as
set forth in Graham v. John Deere Co., 383 U.S. 1 (1966). The KSR Court
summarized the four factual inquiries set forth in Graham that we apply in
determining whether a claim is unpatentable as obvious under 35 U.S.C.
§ 103(a) as follows: (1) determining the scope and content of the prior art,
(2) ascertaining the differences between the prior art and the claims at issue,
(3) resolving the level of ordinary skill in the pertinent art, and
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(4) considering objective evidence indicating obviousness or
nonobviousness. KSR, 550 U.S. at 406 (citing Graham, 383 U.S. at 17–18).
In an inter partes review, Petitioner cannot satisfy its burden of proving
obviousness by employing “mere conclusory statements.” In re Magnum
Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
Petitioner must explain how the proposed combinations of prior art
would have rendered the challenged claims unpatentable. An obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 550 U.S. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249,
1259 (Fed. Cir. 2007). However, Petitioner cannot satisfy its burden of
proving obviousness by employing “mere conclusory statements,” but “must
instead articulate specific reasoning, based on evidence of record” to support
an obviousness determination. Magnum Oil, 829 F.3d at 1380–81.
Petitioner also must articulate a reason why a person of ordinary skill in the
art would have combined the prior art references. In re NuVasive, 842 F.3d
1376, 1382 (Fed. Cir. 2016).
At this final stage, we determine whether a preponderance of the
evidence of record shows that the challenged claims would have been
rendered obvious in view of the asserted prior art. We analyze the asserted
grounds of unpatentability in accordance with these principles.
C. LEVEL OF ORDINARY SKILL
We review the grounds of unpatentability in view of the
understanding of a person of ordinary skill in the art at the time of the
invention. Graham, 383 U.S. at 17. Based on testimony by Peter
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Alexander, Ph.D., Petitioner contends that an ordinarily skilled artisan as of
June 11, 2008, would have either: “(i) a Bachelor-of-Science degree in
electrical engineering, computer science, or computer engineering, or
equivalent, and at least two years of additional experience in database and
networking technology, computer security and/or authentication using
biometric data, or (ii) a post-graduate degree in electrical engineering,
computer science, or computer engineering, or equivalent.” Pet. 13 (citing
Ex. 1002 ¶¶ 14–17). Patent Owner does not contest Petitioner’s position
relating to the level of ordinary skill. See generally Mot. We find
Petitioner’s description of the ordinary level of skill in the art at the time of
the invention to be consistent with the level of skill reflected in the prior art
of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
Accordingly, we adopt and apply the level of ordinary skill proffered by the
Petitioner in this proceeding.
D. WHETHER THE “DECISION LIMITATION” IS INDEFINITE
Patent Owner proposes that original independent claims 1, 17, and 21
be amended to further require “wherein the financial services provider
decide the type of biometric identification data required for the transaction”
(the “Decision Limitation”). Mot. 9–12.
Petitioner analyzes whether the Decision Limitation is sufficiently
definite under 35 U.S.C. § 112 ¶ 2 in the context of substitute claim 17,
which recites (with the Decision Limitation underlined):
17 (amended). A system for using biometric identification data
to positively identify users of financial services card, comprising:
[A] a remote server configured for requesting at least one
biometric identification data of a user associated with a
financial services card, the card being cross associated with a
card identity, wherein the financial services provider decide
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the type of biometric identification data required for the
transaction;
[B] a network connected personal computing device configured
for uploading the at least one biometric identification data of
the user and for transmitting the at least one biometric
identification data to be associated with the card to the remote
server;
[C] the remote server further configured for authenticating the
uploaded plurality of biometric identification data with
biometric identification data stored in a related information
repository;
[D] and storing a record of the uploaded at least one biometric
identification data;
[E] a terminal configured for reading the card identity from the
card, prompting the user to input the at least one biometric
identification data and for transmitting the card identity and
the inputted at least one biometric identification data to the
remote server; and
[F] wherein the remote server is configured to verify the
biometric identification
[G] data for the card for a transaction by retrieving the record of
the user’s biometric identification data record from the
database, determining if the biometric identification data
input into the terminal matches the record of biometric
identification data retrieved from the database and sending a
validation to the terminal if the biometric identification data
entered into the terminal matches record of the biometric
identification data retrieved from the database.
Opp. 4–5.
Petitioner contends that the Decision Limitation is indefinite because
it is “amenable to multiple interpretations,” which depend upon when the
financial services provider “decides” on the type of biometric data required
for the transaction. Opp. 5–6. More specifically, Petitioner argues that the
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Decision Limitation may be interpreted to require that the financial services
provider decide on the type of biometric data required at any one of the
following three times:
(1) Decision during the enrollment stage (alternative 1) –
The financial services provider’s server “decides” which type(s)
of biometric data to request from the user and authenticate using
the related information repository, which are stored in the server
database for validation of a later transaction (see e.g., substitute
claim 17 limitations [17.A]-[17.D] (above));
(2) Decision during the transaction stage (alternative 2) –
The financial services provider’s server “decides” which type(s)
of biometric data a user is prompted to input at a terminal (e.g.,
a point-of-sale terminal to validate a transaction (see e.g.,
substitute claim 17 limitations [17.E]-[17.G] (above));
(3) Decision during the transaction stage (alternative 3) –
The user may input different types of biometric data at a terminal
(e.g., a point-of-sale terminal), and the financial services
provider’s server “decides” to validate the transaction using the
type(s) of biometric data already stored in the database during
the enrollment stage (see e.g., substitute claim 17 limitation
[17.G] (above)).
Id. at 5–6.
Petitioner argues that an ordinarily skilled artisan would consider any
of the three alternative interpretations of the Decision Limitation to be
equally plausible. Id. at 6 (citing Ex. 1027 ¶ 14). Petitioner further argues
that the “decision” about what biometric data is required could occur during
the enrollment stage (elements 17A–D) or later during the transaction stage
(elements 17E–G). Id.
The claim language itself implies that the financial services provider
decides which biometric information is required during the enrollment stage
because the Decision Limitation is added to element 17A, which is the first
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step in the enrollment stage recited in elements 17A–D. However, “in
assessing definiteness, claims are to be read in light of the patent’s
specification and prosecution history.” Nautilus, Inc. v. Biosig Instruments,
Inc., 572 U.S. 898, 908 (2014).
Patent Owner identifies support for the Decision Limitation in the
Specification that favors interpreting the Decision Limitation as occurring
during the transaction stage (i.e., during elements 17E–G). Mot. 14–15
(citing Ex. 1001, 9:9–14). The cited portion of the Specification states: “In
another embodiment, the financial service provider may have the system set
up such that the server 114 queries through the point-of-sale terminal 102
and informs the merchant which biometric identification data is/are required
for the desired transaction.” Ex. 1001, 9:9–14 (emphasis added). The plain
language of the claim is consistent with our interpretation because it
specifies that the biometric data is the data “required for the transaction,”
which refers to the “transaction” recited in element 17G (describing the
operation of the claimed system during a transaction stage).
Based on our review of the Specification and claim language, we
conclude that the Decision Limitation is sufficiently definite under 35 U.S.C.
§ 112, ¶ 2. Based on that review, we also interpret the Decision Limitation
to require that the financial services provider informs, through the server,
which type(s) of user biometric identification data must be received at the
terminal (e.g., a point-of-sale terminal) to validate the transaction.
E. WHETHER THE MOTION MEETS THE REQUIREMENTS OF 35 U.S.C. § 316(d)
AND 37 C.F.R. § 42.121
1. Number of Claims
Patent Owner proposes a one-to-one substitution of claims for
challenged original claims 1, 2, 11, 14–19, and 21, which presumptively
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meets the requirements of 35 U.S.C. § 316(d)(1)(B) and 37 C.F.R.
§ 42.121(a)(3). Petitioner does not argue that Patent Owner has introduced
an unreasonable number of substitute claims. See generally Opp. We
determine that Patent Owner has proposed a reasonable number of substitute
claims.
2. Responsiveness
We may deny a motion to amend if the “amendment does not respond
to a ground of unpatentability involved in the trial.” 37 C.F.R.
§ 42.121(a)(2)(i) (2019). Patent Owner contends that its proposed
amendments respond to Petitioner’s grounds of unpatentability of the
original claims because none of the prior art upon which Petitioner’s
challenges were based discloses or suggests the Decision Limitation added
to every challenged claim. Mot. 13. Petitioner does not argue that Patent
Owner’s amendment fails to respond to the challenges to the original claims.
See generally Opp. Rather, Petitioner relies upon a new prior art reference
to address the Decision Limitation. Id. at 10–25. We determine that the
Motion meets the requirements of 37 C.F.R. § 42.121(a)(2)(i).
3. Whether the Amendments Enlarge the Scope of the Claims
An amendment may not enlarge the scope of the claims of the patent.
35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii). We determine that
Patent Owner’s addition of the Decision Limitation narrows the scope of
every challenged claim and thus satisfies the prohibition against enlarging
the scope of any claim.
4. Whether the Amendments Introduce New Matter
An amendment may not introduce new matter. 35 U.S.C. § 316(d)(3);
37 C.F.R. § 42.121(a)(2)(ii). As noted above, Patent Owner identifies a
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portion of the Specification as providing support for the Decision Limitation.
Mot. 14–15 (citing Ex. 1001, 9:9–14).7 The cited portion of the
Specification states: “In another embodiment, the financial service provider
may have the system set up such that the server 114 queries through the
point-of-sale terminal 102 and informs the merchant which biometric
identification data is/are required for the desired transaction.” Ex. 1001,
9:9–14 (emphasis added). As discussed above, our interpretation of the
Decision Limitation is supported by this portion of the Specification.
Petitioner argues that if Patent Owner were to argue that the Decision
Limitation can be met by the financial services provider deciding which
biometric information is required for a transaction during the enrollment or
transaction stages, then the claims would be unpatentable for lack of written
description support in the Specification. Opp. 8. Petitioner concedes that
the portion of the Specification relied upon by Patent Owner for support
describes making the decision about what biometric information is needed
during the transaction stage. Id. at 9. As explained in Part II.D above, we
have narrowly interpreted the Decision Limitation to encompass only such
decisions. Accordingly, Petitioner does not persuade us that the
Specification fails to provide the required written description for the

7 Normally, a Patent Owner must identify material in the originally filed
application leading to issuance of the patent at issue that supports the
proposed amendment. Lectrosonics, Paper 15 at 7. Failing to cite the
original disclosure is a basis for denying a motion to amend. Id. However,
because Patent Owner appears pro se, we reviewed the original disclosure
ourselves to verify that the portion of the Specification cited is identically
found in that disclosure. Compare Ex. 1016 ¶ 42, with Ex. 1001, 9:9–14.
Accordingly, in this case, we find that Patent Owner’s citation to the
Specification functionally refers to material in the original disclosure.
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Decision Limitation as we have interpreted it. Additionally, we conclude
that Patent Owner has established that the Specification meets the written
description requirement for the Decision Limitation.
F. PROPOSED SUBSTITUTE CLAIMS 1, 2, 11, 14–19, AND 21:
OBVIOUSNESS IN VIEW OF KARTHIK, ROBINSON, AND ORTIZ
Petitioner argues that substitute claims 1, 2, 11, 14–19, and 21 are
obvious in view of Karthik, Robinson, and Ortiz.8 Opp. 10–25. Petitioner
relies upon its prior showing that Karthik and Robinson render original
claims 1, 2, 11, 14–19, and 21 unpatentable and relies upon Ortiz as
motivating an ordinarily skilled artisan to enhance the security of the system
suggested by Karthik and Robinson by adding the Decision Limitation. Id.
Petitioner supports its arguments with citations to specific portions of Ortiz
and testimony from Peter Alexander, Ph.D. Id.
Patent Owner did not file a reply in support of its Motion. Thus,
Petitioner’s argument and evidence that substitute claims 1, 2, 11, 14–19,
and 21 are unpatentable is uncontroverted. As explained below, and based
on our review of that argument and evidence, we conclude that Petitioner
has demonstrated by a preponderance of evidence that the combined
teachings of Karthik, Robinson, and Ortiz render substitute claims 1, 2, 11,
14–19, and 21 unpatentable as obvious. Accordingly, we deny Patent
Owner’s Motion to Amend.

8 US 2003/0163710 A1, published August 28, 2003 (Ex. 1026, “Ortiz”).
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1. Karthik
Karthik is titled “Biometric
Verification for Electronic
Transactions Over the Web.”
Ex. 1003, code (54). Karthik
describes “a method of conducting
electronic-commerce transactions
over an unsecured network by
registering the fingerprints of the
users and authenticating electronic
transactions using a ‘biometrics’
verification technology. In this way,
each and every transaction on the
Internet can be secured.” Id. ¶ 53.
Karthik’s Figure 6, reproduced at
right, illustrates a process for
authenticating a credit card
transaction using stored biometric
data. Id. at Fig. 6. At step 611,
previously stored biometric data of
the credit card owner is compared
with biometric data obtained from
the user (whether the card owner or
otherwise) via a biometric scanner at
step 607. Id. ¶¶ 151–171.
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The user provides the biometric data retrieved in step 611 during an
enrollment process. Id. ¶¶ 68–86; see also id. at Fig. 1 (steps 103–109).
After enrollment, the user may provide additional biometric data to
Karthik’s database. Id. ¶¶ 99–117; see also id. at Figs. 3a, 3b
(steps 306–319).
2. Robinson
Robinson similarly teaches a system for activating a financial card
after verifying the identity of the user of the card by comparing the user’s
biometric data against information stored in a related repository of
information. Ex. 1004, 2:31–34, 3:33–38, 4:27–31. Figure 2 of Robinson is
reproduced below.

Robinson’s Figure 2, above, is a flow chart illustrating a process for
enrolling a card presenter in a system for biometric identity verification. Id.
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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
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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
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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
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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
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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).
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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
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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.
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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