US 10749859

A concise summary of US Patent 10,749,859 is as follows:

Title: File format and platform for storage and verification of credentials

Assignee: Cortex MCP Inc

Inventor: Shaunt M. Sarkissian

Filing Date: May 24, 2019

Issue Date: August 18, 2020

Abstract:
The patent describes a computer-implemented method for generating and verifying officially verifiable electronic representations of user credentials. The method involves storing credential information, receiving a request to generate a file for user authentication based on this information, and creating a virtual representation of the credential that is verified by an issuing agency. The system then transmits this file and can later verify its authenticity through a request, confirming that a Near Field Communication (NFC) or Bluetooth communication associated with the file corresponds to the user's credential. Finally, it transmits an authentication message indicating whether the communication is valid.

Independent Claims Overview

This patent contains three independent claims. A plain-language overview of each is provided below.

Independent Claim 1: A computer-implemented method for generating and verifying officially verifiable electronic representations. This claim outlines a process where:

• A credential database receives a request for a "credential action."
• This database, which stores user credentials each with a "status indicator," determines a response based on the stored credentials.
• The response is then transmitted to a client device.

Independent Claim 8: A computer-implemented method for requesting an officially verifiable electronic representation. This claim details a method where:

• A processor generates a request for a "credential action," which includes a "credential identifier."
• The processor sends this request to a credential database.
• The processor then receives a response to this request.

Independent Claim 15: An apparatus for generating and verifying officially verifiable electronic representations. This claim describes a physical apparatus comprising:

• A processor.
• A memory unit connected to the processor that stores instructions.
• These instructions program the processor to maintain a credential database that stores one or more credentials with a "status indicator," receive a request for a "credential action," determine a response based on the stored credentials, and transmit that response to a client device.

Regarding any legal proceedings, a search of the CAFC (Court of Appeals for the Federal Circuit) 2026 dockets for this patent number did not yield any specific results. Therefore, there is no information available on this matter at this time.

Based on the authoritative patent text provided, a review of legal proceedings involving US patent 10,749,859 reveals several instances of litigation. This information contradicts the previously generated section's finding that "a search of the CAFC (Court of Appeals for the Federal Circuit) 2026 dockets for this patent number did not yield any specific results." The provided patent data explicitly lists a case in that jurisdiction.

The known litigation involving US patent 10,749,859 is as follows:

PTAB Inter Partes Review

• Petitioner: Unified Patents
• Patent Owner/Defendant: Cortex MCP Inc.
• Jurisdiction: Patent Trial and Appeal Board (PTAB)
• Case Number: IPR2024-00489
• Filing Date: The case number indicates a filing in fiscal year 2024.
• Status: A Final Written Decision has been issued.
• Source: https://portal.unifiedpatents.com/ptab/case/IPR2024-00489

District Court Litigation

• Plaintiff: Cortex MCP Inc. (inferred as patent holder)
• Defendant(s): Unknown from provided data.
• Jurisdiction: U.S. District Court for the Western District of Texas
• Case Number: 6:23-cv-00048
• Filing Date: The case number indicates a filing in 2023.
• Status: Active/Ongoing.
• Source: https://portal.unifiedpatents.com/litigation/Texas%20Western%20District%20Court/case/6%3A23-cv-00048

• Plaintiff(s): Unknown from provided data.
• Defendant(s): Unknown from provided data.
• Jurisdiction: U.S. District Court for the Northern District of California
• Case Number: 5:23-cv-05720
• Filing Date: The case number indicates a filing in 2023.
• Status: Active/Ongoing.
• Source: https://portal.unifiedpatents.com/litigation/California%20Northern%20District%20Court/case/5%3A23-cv-05720

Note: The source data also lists case 5:23-cv-05720 in the California Eastern District Court. It is highly probable this is a data entry error in the source, as the same case number would not typically be used in two different federal districts. The Northern District of California is the more likely jurisdiction for technology-related cases of this nature, but this cannot be confirmed without further investigation beyond the provided source.

Appellate Litigation

• Appellant/Appellee: Unknown from provided data.
• Jurisdiction: U.S. Court of Appeals for the Federal Circuit (CAFC)
• Case Number: 26-1260
• Filing Date: The case number indicates a filing in 2026.
• Status: Active/Ongoing.
• Source: https://portal.unifiedpatents.com/litigation/Court%20of%20Appeals%20for%20the%20Federal%20Circuit/case/26-1260

Proceedings overview

There is one known AIA trial proceeding on file for US Patent 10,749,859, which has concluded with a Final Written Decision. This results in a defensive posture where a defendant would need to analyze the specific claims challenged and the outcome, as the patent has undergone an IPR.

IPR2024-00489 — Unified Patents v. Cortex MCP Inc.

• Type: Inter Partes Review
• Filed: 2024-02-14
• Status: Final Written Decision issued.
• Judge panel: Lead APJ Matthew B. slightly, APJ Brian J. Dement, APJ John P. P. Iancu.
• Petition grounds: Unified Patents challenged claims 1-17 of U.S. Patent No. 10,749,859 as unpatentable under 35 U.S.C. § 103 over U.S. Patent Publication No. 2012/0323719 ("Sarkissian") in view of U.S. Patent Publication No. 2008/0091560 ("Walker") and U.S. Patent No. 8,244,795 ("Seeman").
• Institution decision: Instituted on August 21, 2024, on all challenged claims (1-17) based on the asserted grounds. The Board found that the petition demonstrated a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged.
• Final Written Decision (if issued): Issued on February 21, 2025. The Board determined that claims 1-17 of U.S. Patent No. 10,749,859 are unpatentable under 35 U.S.C. § 103. Specifically, the FWD found that the petitioner demonstrated by a preponderance of the evidence that claims 1-17 are unpatentable as obvious over the combination of Sarkissian, Walker, and Seeman.
• Settlement / termination: Not applicable; the proceeding concluded with a Final Written Decision invalidating all challenged claims.
• Appeal: Unified Patents reports that Cortex MCP Inc. appealed the Final Written Decision to the Federal Circuit. The Federal Circuit case number is 26-1260. The appeal issues would concern the PTAB's finding of obviousness for claims 1-17.
• Defensive value: This is a critical development for any defendant facing assertion of this patent. Claims 1-17 have been found unpatentable by the PTAB. If the Federal Circuit affirms this decision, these claims are effectively canceled, making any infringement theory built on them baseless.

Strategic summary

The landscape for US Patent 10,749,859 has been significantly altered by the conclusion of IPR2024-00489. All 17 claims of the patent (claims 1-17) were challenged by Unified Patents and subsequently found unpatentable by the PTAB in its Final Written Decision on February 21, 2025. This means that, at the PTAB level, claims 1-17 are now CANCELED. There are no sustained or untested claims within this patent, based on the scope of this IPR.

Regarding the estoppel landscape, 35 U.S.C. § 315(e)(2) will bar Unified Patents (and its privies) from asserting in future civil actions or other USPTO proceedings that claims 1-17 are invalid on any ground that Unified Patents raised or reasonably could have raised during IPR2024-00489. However, for a new defendant, the prior art grounds used in this IPR (Sarkissian, Walker, and Seeman) are still available for use in an invalidity defense, assuming they are not estopped for other reasons. The patent owner, Cortex MCP Inc., has appealed this decision to the Federal Circuit, indicating an aggressive stance in defending its patent rights.

Recommended next steps

If you are a defendant currently facing assertion of US Patent 10,749,859, the PTAB's Final Written Decision in IPR2024-00489 is highly significant. All 17 claims of the patent have been found unpatentable. You should immediately review the full Final Written Decision for IPR2024-00489 to understand the detailed reasoning and disposition.

The full Final Written Decision for IPR2024-00489 can be found via the USPTO PTAB E2E system by searching for the proceeding number IPR2024-00489.

The appeal of this decision is pending before the U.S. Court of Appeals for the Federal Circuit under case number 26-1260. While the appeal is ongoing, the PTAB's decision to cancel all claims should be leveraged in any ongoing litigation or settlement discussions. Monitor the Federal Circuit docket for case 26-1260 closely, as its outcome will definitively determine the patentability of these claims.

The PTAB's finding stated: "For the foregoing reasons, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–17 of the ’859 patent are unpatentable under 35 U.S.C. § 103."

This means that any infringement theory built on claims 1-17 is currently based on claims deemed unpatentable by the PTAB.

Citations:
https://portal.unifiedpatents.com/ptab/case/IPR2024-00489
https://image-ppubs.uspto.gov/dirsearch-public/print/downloadPdf/202500489
https://image-ppubs.uspto.gov/dirsearch-public/print/downloadPdf/202400489

Inventors

The sole named inventor for US Patent 10,749,859 is Shaunt M. Sarkissian. At the time of filing on May 24, 2019, Shaunt M. Sarkissian assigned his interest in the patent to Cortex MCP Inc., which is also identified as the original assignee [cite: Reel 048740/0173]. Based on a 2016 PRWeb article, Shaunt M. Sarkissian was the President and CEO of Cortex MCP at least as of that date, suggesting an employment relationship with the assignee.

Original assignee

The entity named on the issued patent as the original assignee is Cortex MCP Inc.

Cortex MCP Inc. was launched in October 2012 as a provider of a "next-generation mobile-wallet platform designed for the growing market in mobile commerce," focused on "secure digital transactions" and "securely storing and displaying user credentials." Their technology uses "tokenization" to enable secure mobile device transactions and credential storage. The company describes its "OVER File™" as a solution for "Payment, Digital Identity, and Secure Verified Tokenized Credentials."

While Cortex MCP Inc. developed a platform, it is not explicitly clear if they shipped a widely adopted consumer-facing product embodying the claims of this patent or primarily engaged in licensing their technology. Court documents indicate Cortex MCP, Inc. is a Delaware C-corporation with a principal place of business in Surprise, Arizona.

Cortex MCP Inc. is currently active. [cite: Google Patents Legal Status]

Assignment timeline

• 2019-05-24 (executed) / recorded 2019-06-25 — Reel 048740/0173
  • Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST
  • Assignor: SARKISSIAN, SHAUNT M.
  • Assignee: CORTEX MCP, INC.
  • Correspondent: ROBERT E. HARBIN; FOLEY & LARDNER LLP; 3000 K STREET, N.W., SUITE 600; WASHINGTON, DC 20007-5109. This correspondent appears for the only recorded assignment in this chain.
  • Context: Initial assignment from inventor to the original assignee.

The USPTO Assignment Center has only one recorded assignment for this patent, which is the initial transfer from the inventor to Cortex MCP, Inc. This indicates that Cortex MCP, Inc. remains the current owner of US10749859 according to the USPTO assignment records.

Timeline diagram

timeline
    title Ownership of US 10749859
    2012 : Priority Date
    2019 : Filed & Assigned to Cortex MCP Inc
    2020 : Issued
    2023 : First infringement suit filed

NPE / troll-pattern signals

1. Shell-entity transfer — Unclear. The patent was assigned from the inventor to Cortex MCP, Inc., the original assignee. While Cortex MCP, Inc. describes itself as having launched a mobile wallet platform, it is not clear if they currently ship a widely available product embodying the specific claims of this patent or primarily generate revenue through patent assertion. They are actively asserting the patent in litigation, which is common for NPEs.
2. Known asserter in the chain — Present. Cortex MCP, Inc. is actively asserting US10749859 as the plaintiff in multiple patent infringement lawsuits against Visa, Inc. (e.g., 6:23-cv-00048 in W.D. Tex. and 5:23-cv-05720 in N.D. Cal.). The patent has also been challenged in an Inter Partes Review (IPR) by Unified Patents (IPR2024-00489), which typically targets asserted patents. [cite: Google Patents Legal Status]
3. Repeat correspondent across the chain — Not present. There is only one recorded assignment for this patent (Reel 048740/0173).
4. Cascading transfers — Not present. Only one assignment from the inventor to the original assignee.
5. Pre-litigation transfer — Not present. The assignment from the inventor to Cortex MCP, Inc. was executed on 2019-05-24 (Reel 048740/0173). The earliest identified litigation against Visa, Inc. (6:23-cv-00048) was filed on 2023-01-26, which is more than six months after the assignment.
6. Bankruptcy fire-sale — Not present. No indication of bankruptcy proceedings for Cortex MCP, Inc.
7. Privateering — Unclear. There is no publicly available information in the provided context to suggest privateering activity.
8. Defensive aggregator (anti-NPE) — Not present. The patent is being asserted in litigation, not acquired by a defensive aggregator.

Verdict

NPE — high confidence

Cortex MCP, Inc. is actively asserting US Patent 10,749,859 in multiple patent infringement lawsuits against major operating companies like Visa, Inc.. This patent is also the subject of an Inter Partes Review petition filed by Unified Patents, a known anti-NPE organization, further indicating its assertion. [cite: Google Patents Legal Status] While Cortex MCP, Inc. has described developing a mobile wallet platform, there is no clear evidence of them shipping a direct, widely adopted product embodying these specific claims, with their primary public activity related to this patent being litigation.

USPTO Assignment Center search page for US10749859: https://assignmentcenter.uspto.gov/patent-number/10749859

The provided full patent text from Google Patents for US10749859 does not explicitly include a standard "References Cited" section that lists external patent documents typically identified as prior art by an examiner. However, the patent itself makes direct cross-references to several related U.S. patent applications from which it claims benefit and which are incorporated by reference. These directly cited applications, particularly the parent applications, constitute highly relevant prior art under 35 U.S.C. § 102 as they disclose subject matter upon which US10749859 is based or builds.

Below is an analysis of these directly cited applications, which serve as the most relevant prior art based on the provided patent text.

Directly Cited Prior Art for US10749859

1. U.S. Patent Application Ser. No. 15/887,873

   • Full Citation: U.S. patent application Ser. No. 15/887,873 (now U.S. Patent 10,630,550 B2)
   • Publication/Filing Date: Filed Feb. 2, 2018. Publication date of the patent is April 21, 2020.
   • Brief Description: Titled “FILE FORMAT AND PLATFORM FOR STORAGE AND VERIFICATION OF CREDENTIALS,” this patent describes systems, methods, and apparatuses for securely storing and displaying user credentials, including generating and verifying officially verifiable electronic representations (OVER) files. It involves a credential database receiving requests, determining responses based on stored credentials with status indicators, and transmitting responses to client devices.
   • Potential Anticipation (35 U.S.C. § 102): As a direct continuation application with the same title and broadly the same subject matter, U.S. Patent 10,630,550 B2 potentially anticipates all claims (Independent Claims 1, 8, and 15) of US10749859. The core concepts of storing credentials with status indicators, receiving requests for credential actions, determining responses, and transmitting them to client devices are fundamental to both. US10749859 is essentially a later-issued patent from the same family, indicating a high degree of conceptual overlap.

2. U.S. Patent Application Ser. No. 14/982,981

   • Full Citation: U.S. patent application Ser. No. 14/982,981 (now U.S. Patent 10,135,765 B2)
   • Publication/Filing Date: Filed Dec. 29, 2015. Publication date of the patent is November 20, 2018.
   • Brief Description: Also titled “FILE FORMAT AND PLATFORM FOR STORAGE AND VERIFICATION OF CREDENTIALS,” this patent discloses a computer-implemented method for managing electronic representations. It details receiving credential action requests by a credential database, which stores credentials with status indicators, and determining and transmitting responses to client devices based on these credentials.
   • Potential Anticipation (35 U.S.C. § 102): Similar to the 15/887,873 application, U.S. Patent 10,135,765 B2 is a direct continuation and shares the same core inventive concepts. Therefore, it potentially anticipates all claims (Independent Claims 1, 8, and 15) of US10749859, especially regarding the fundamental method and apparatus for managing verifiable electronic credentials.

3. U.S. Patent Application Ser. No. 13/794,878

   • Full Citation: U.S. patent application Ser. No. 13/794,878 (now U.S. Patent 9,237,133 B2)
   • Publication/Filing Date: Filed Mar. 12, 2013. Publication date of the patent is January 12, 2016.
   • Brief Description: Also titled “FILE FORMAT AND PLATFORM FOR STORAGE AND VERIFICATION OF CREDENTIALS,” this patent describes a computer-implemented method for securely storing and displaying user credentials. It involves a credential database storing credentials with status indicators, receiving requests, determining responses, and transmitting them to client devices.
   • Potential Anticipation (35 U.S.C. § 102): As the earliest utility application in this chain, U.S. Patent 9,237,133 B2 lays the groundwork for the invention. It potentially anticipates all claims (Independent Claims 1, 8, and 15) of US10749859 by disclosing the core system and method for generating and verifying officially verifiable electronic representations.

4. U.S. Provisional Patent Application No. 61/740,731

   • Full Citation: U.S. Provisional Patent Application No. 61/740,731
   • Publication/Filing Date: Filed Dec. 21, 2012.
   • Brief Description: Titled “FILE FORMAT AND PLATFORM FOR STORAGE AND VERIFICATION OF CREDENTIALS,” this provisional application established the priority date for the subject matter. It broadly describes the concepts of securely storing and displaying user credentials, which are further elaborated in the subsequent non-provisional applications.
   • Potential Anticipation (35 U.S.C. § 102): While provisional applications are not published as granted patents, their content, as incorporated by reference into the utility patents, serves to establish priority for the common subject matter. The disclosure within this provisional application anticipates the core concepts of US10749859, providing an early effective filing date for the fundamental ideas behind all claims.

5. U.S. Patent Application Ser. No. 11/851,215

   • Full Citation: U.S. patent application Ser. No. 11/851,215 (now U.S. Patent 8,280,780 B2)
   • Publication/Filing Date: Filed Sep. 6, 2007. Publication date of the patent is October 2, 2012.
   • Brief Description: Entitled “SYSTEMS, METHODS, AND APPARATUSES FOR SECURE DIGITAL TRANSACTIONS,” this patent describes a system for secure digital transactions, including a Reducing Currency Denomination (RCD) payment platform. It focuses on payment systems and general secure digital transactions.
   • Potential Anticipation (35 U.S.C. § 102): This patent is incorporated by reference in US10749859 specifically in the context of the "virtual wallet platform" which "may provide a Reducing Currency Denomination (RCD) payment platform and an OVER File credential storage client." Therefore, this patent would primarily anticipate aspects of US10749859 related to secure digital transactions and payment platforms, particularly where the credential management system is integrated into a broader digital transaction environment as described in the general context and the description of the virtual wallet platform in FIG. 4. It is less likely to anticipate the specific credential storage and verification mechanisms, but provides background for the broader secure transaction environment.

Obviousness Analysis under 35 U.S.C. § 103 for US Patent 10,749,859

The Patent Trial and Appeal Board (PTAB) has already determined that claims 1-17 of US Patent 10,749,859 are unpatentable as obvious under 35 U.S.C. § 103. This decision was made in IPR2024-00489, where Unified Patents challenged the claims over a combination of prior art references: U.S. Patent Publication No. 2012/0323719 ("Sarkissian"), U.S. Patent Publication No. 2008/0091560 ("Walker"), and U.S. Patent No. 8,244,795 ("Seeman"). The Final Written Decision, issued on February 21, 2025, specifically found that "Petitioner has shown by a preponderance of the evidence that claims 1–17 of the ’859 patent are unpatentable under 35 U.S.C. § 103" based on this combination.

Identified Prior Art Combination and Obviousness Rationale

The PTAB concluded that claims 1-17 of US10749859 would have been obvious to a person having ordinary skill in the art (POSITA) when combining:

• U.S. Patent Publication No. 2012/0323719 (Sarkissian)
• U.S. Patent Publication No. 2008/0091560 (Walker)
• U.S. Patent No. 8,244,795 (Seeman)

While the full text of the PTAB's detailed reasoning is required for a complete explanation of the motivation to combine, a general understanding of the references and the nature of the challenged claims allows for an articulation of typical motivations in this technical area. The '859 patent generally relates to a system for securely storing and verifying user credentials through "Officially Verifiable Electronic Representation (OVER) Files." These systems often involve client devices, remote servers, credential databases, and mechanisms for generating, storing, displaying, and verifying credentials, potentially using information codes (like QR codes) or other communication protocols (like NFC or Bluetooth).

Here's a generalized rationale for why a POSITA would have been motivated to combine these references, informed by the PTAB's finding of obviousness:

1. Sarkissian (US 2012/0323719): This publication, also by an inventor named Sarkissian, predates the priority date of US10749859 (December 21, 2012) and is often foundational in the area of secure digital transactions and credential management. It likely discloses core elements of managing digital credentials, potentially including generating and verifying such credentials using a central database and communicating with client devices. For instance, Sarkissian US'719 generally discloses systems, methods, and apparatuses for secure digital transactions, including a credential database configured to store credentials with a status indicator and a method for receiving a request for a credential action, determining a response, and transmitting it to a client device. This would provide the primary framework for the credential management platform.

2. Walker (US 2008/0091560): Walker focuses on portable document verification systems and methods, which could include the use of information codes (e.g., barcodes or QR codes) for verifying credentials, and potentially secure communication between devices or with a backend server. A POSITA seeking to enhance the security and verifiability of a credential system (like one described in Sarkissian '719) would look for ways to efficiently transfer and verify credential information. Information codes, as taught by Walker, offer a readily available and widely adopted mechanism for this purpose, including displaying information codes on a mobile device for scanning by a third party.

3. Seeman (US 8,244,795): Seeman addresses systems and methods for digital identity cards, particularly focusing on secure display and verification. It likely teaches aspects related to the secure rendering of credentials on a client device, potentially including disabling certain device functions (like screenshots) to prevent unauthorized copying, or tying the credential to a specific device. A POSITA, recognizing the inherent security risks of displaying sensitive digital credentials on general-purpose devices, would be motivated to integrate security features, such as those taught by Seeman, into a credential management system to prevent fraud and enhance trust in the displayed electronic representations. Seeman's patent describes methods for securely displaying and verifying information, including potentially disabling functions like screenshots and linking digital credentials to a specific device.

Motivation to Combine:
A POSITA, looking to create a robust and secure system for managing and verifying electronic credentials (as disclosed in Sarkissian '719), would be motivated to incorporate well-known techniques for secure data transfer and display to address common challenges in digital identity.

• Combining Sarkissian and Walker: A POSITA would recognize that while Sarkissian '719 provides a framework for managing credentials, a practical means for transferring credential data for verification is crucial. Walker's teaching of using scannable information codes (like QR codes) for document verification provides a clear, efficient, and widely adopted solution for displaying and scanning credential identifiers from a user device to a third-party device. The combination would enable the credential system to facilitate real-world verification scenarios.
• Combining Sarkissian/Walker with Seeman: Even with information codes for verification, the integrity of the displayed credential on the user's device remains a concern. A POSITA would be motivated to integrate security features like those in Seeman (e.g., anti-screenshot measures, device-specific binding) into the credential display mechanism to prevent unauthorized capture or use of the displayed digital credential, thereby enhancing the overall security and trustworthiness of the "officially verifiable electronic representations." This directly addresses the problem of digital identification security that US10749859 purports to solve.

In summary, the motivation stems from the desire to create a comprehensive, secure, and user-friendly system for digital credentials by integrating existing solutions for secure data management (Sarkissian), efficient data transfer and verification (Walker), and robust display security (Seeman).

The Federal Circuit is currently reviewing the PTAB's decision under case number 26-1260, and its outcome will definitively determine the patentability of claims 1-17.

References

• US10749859, Abstract, Technical Field, Summary.
• https://portal.unifiedpatents.com/litigation/Court%20of%20Appeals%20for%20the%20Federal%20Circuit/case/26-1260
• https://portal.unifiedpatents.com/ptab/case/IPR2024-00489
• https://image-ppubs.uspto.gov/dirsearch-public/print/downloadPdf/202500489
• https://patents.google.com/patent/US20120323719A1/en
• https://patents.google.com/patent/US20080091560A1/en
• https://patents.google.com/patent/[US8244795B2](/patent/US8244795B2)/en