Context: In the past couple of years, Proxense has filed multi-patent infringement complaints over optical authentication technologies against several large tech companies, including Google, Samsung, and Apple (March 23, 2024 ip fray article). Google and Apple both challenged some of those patents, including U.S. Patent No. 8,886,954 (“Biometric personal data key (PDK) authentication”) in the United States Patent & Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB). Google later dismissed its challenge when it settled its dispute with Proxense earlier this year (January 14, 2025 ip fray article). In a decision by the USPTO PTAB in April, the patent was declared unpatentable as obvious over Ludtke. This stood in stark contrast to an earlier, parallel decision over U.S. Patent No. 8,352,730 (“Biometric personal data key (PDK) authentication”), in which the USPTO’s Central Reexamination Unit determined substantially identical claims as patentable over Ludtke.
What’s new: Proxense yesterday requested a director review of the USPTO PTAB’s decision, alleging that it violates the Administrative Procedure Act (APA) by failing to provide a reasoned explanation for reaching an inconsistent result with a prior determination by the office. Rather than engaging with the CRU’s determinations, the PTAB summarily dismissed them as “not an assessment on the merits” and “of no relevance”. It also ignored the fact that Apple had notice of the CRU’s determination and a full opportunity to address it, Proxense has alleged. Permitting the decision to stand would result in two inconsistent results on substantially similar issues and the same underlying facts, thereby undermining the integrity and consistency of office proceedings, the patentee added.
Direct impact and wider ramifications: The divisions’ clash indeed reveals an inconsistency in the USPTO’s proceedings, which goes against a Federal Circuit decision in Vivint, Inc. (September 29, 2021 Federal Circuit decision). Under the APA, the Federal Circuit ruled, concurrent parallel USPTO proceedings cannot result in inconsistent results without a reasoned explanation. It held:
“We must set aside an agency action that is either an abuse of discretion or arbitrary and capricious… agency action that ‘departs from established precedent without a reasoned explanation is arbitrary and capricious’.”
This is Proxense’s request for director review:
The patentee made three key arguments:
- The Board Reached Results Inconsistent with the 052 Re-Exam: In its reexamination, the CRU determined that claims reciting “receiving by an application an access message from the agent allowing the user access to the application” were patentable over Ludtke. But the board determined that claims reciting “receiving, at an application, an access message from the trusted authority indicating that the trusted authority successfully authenticated the one or more codes and other data values sent to the third party and allowing the user access to the application” were unpatentable over Ludtke. The two are substantively similar, yet the PTAB offered no reasoned explanation to justify its inconsistent result.
- The Board Failed to Provide a Reasoned Explanation: This lack of explanation meant the PTAB acted “arbitrarily and capriciously”.
- The Board’s Procedural Statements are Inaccurate: The PTAB disregarded Proxense’s arguments concerning the controlling effect of the CRU’s determinations under the APA, characterizing them as “untimely.” But the PTAB had no liberty to do this unless Apple was not given notice and the opportunity to respond, which it was.
Counsel
Proxense is being represented by David L. Hecht of Hecht Partners LLP, who also acts for Proxense in a petition brought against it by Intel, which the USPTO PTAB denied last week (June 27, 2025 ip fray article), and a patent infringement complaint against Korean automakers Hyundai, KIA and Genesis in the Western District of Texas (January 14, 2025 ip fray article).
Apple is being represented by a team at Duane Morris: Philip W. Woo, D. Stuart Bartow, Monte T. Squire, and Paul Belnap.