USPTO upholds core Proxense patent in Samsung, Apple, Microsoft, Google invalidation cases

Context:

• Biometrics firm Proxense has targeted several big tech companies in a multi-patent infringement enforcement campaign in the U.S., including Google, Samsung, Microsoft, and Apple (March 23, 2024 ip fray article). The company was also challenged over several of those asserted patents, which cover optical authentication technologies, including U.S. Patent No. 8,352,730 (“Biometric personal data key (PDK) authentication”), with inter partes reviews (IPRs) filed in the United States Patent & Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB). While Google settled its dispute with Proxense earlier this year (January 14, 2025 ip fray article), and Samsung settled in 2023, the petitions continued.
• The USPTO gave Proxense the chance to amend the ‘731 patent claims before it made its final decision. But it then halted the reexamination, preventing the examiner from entering the amendments and finalizing the proceeding.
• Following a PTAB judgment in the parallel Apple case (which declared one of its patents unpatentable as obvious over Ludtke).

What’s new: The USPTO’s Central Reexamination Unit yesterday upheld the validity of patent ‘730, finding that the amended claims made them patentable. It noted that the claims have been amended to require the user to “complete a transaction of the user accessing the application” and “principal parties to the transaction be the user and the application” – both of which have not yet been addressed in related proceedings. Most notably, the USPTO found that while Ludtke and Burger are the closest prior arts of record, neither:

“discloses receiving an access message by an application from the agent allowing the user access to the application and complete a transaction of the user accessing the application, wherein the principal parties to the transaction are the user and the application.”

Direct impact: This is a huge win for Proxense, as this patent has now survived all of the key references (Ludtke and Burger) made by the tech companies involved in its payment/authentication cases. Further, this patent being upheld could also help its case with the director review it has requested over the PTAB’s decision to declare U.S. Patent No. 8,886,954 (“Biometric personal data key (PDK) authentication”) unpatentable as obvious over Ludtke (July 3, 2025 ip fray article). The company alleged in July that the PTAB’s decision 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.

Wider ramifications: This decision also comes after former USPTO Acting Director Morgan Stewart introduced a new process for America Invents Act (AIA) proceedings that shifted discretionary denial authority to the director, prohibiting the institution or maintenance of IPRs when a challenged claim has already been found patentable in a third-party Ex Parte Reexamination (EPR) (March 27, 2025 ip fray article). In this case, the PTAB panel was assigned to all related instituted IPRs that were substantially duplicative of the already-advanced EPRs, which ultimately created contradictory positions within the USPTO. However, under the new system, the panel would not have been permitted to institute, stay, or interfere with the ongoing EPRs.