US 5870723

I'll search for the specific patent number and any 2026 CAFC docket activity.

Let me pull the patent's own claim text and check for any 2026 CAFC docket activity.

Let me try to retrieve the patent's actual claim set and confirm whether any 2026 appellate activity exists.

US 5,870,723 — Direct Identifier Lookup

I searched for the literal number 5870723 (US 5,870,723; application 08/705,399) and screened the results for any 2026 Federal Circuit docket activity. Findings below, with explicit uncertainty flags where I could not obtain authoritative verbatim text.

Bibliographic record

Priority chain (important for family scope): 08/705,399 is a continuation-in-part of 08/442,895 (now US 5,613,012), which is a continuation-in-part of 08/345,523 (now US 5,615,277). Source: Google Patents family/priority data, and the cross-reference recitals reproduced in later family members (e.g., US 2001/0000535 A1; WO 00/45247).

Ownership chain (assignment record on the Google Patents page)

SmartTouch LLC (Jan 16, 1997) → SmartTouch, Inc. (Oct 22, 1998) → Veristar Corporation (Jul 24, 2001, "change of name") → Indivos Corporation (Oct 15, 2001, "change of name") → Excel Innovations, Inc. (Feb 10, 2003) → AVIV, LLC (Mar 26, 2003) → back through Indivos/Excel (2003, including an "annulment of assignment" entry dated Sep 16, 2003 and "judgment of patent ownership" dated Jan 5, 2006 naming Indivos Corporation as a wholly owned subsidiary of Solidus Networks, Inc. d/b/a Pay By Touch) → YT Acquisition Corporation (Sep 9, 2008, "asset sale and purchase agreement") → Your Technology, Inc. (f/k/a YT Acquisition Corporation) → Open Invention Network, LLC (Oct 13, 2010).

Abstract (verbatim, as printed on the patent)

"A method and system for tokenless authorization of commercial transactions between a buyer and a seller using a computer system. A transaction is proposed by a seller, and the buyer signals his acceptance by entering his personal authentication information comprising a PIN and at least one biometric sample, forming a commercial transaction message. The commercial transaction message is forwarded to the computer system, where the computer system compares the personal authentication information in the commercial transaction message with previously registered buyer biometric samples. If the computer system successfully identifies the buyer, a financial account of the buyer is debited and a financial account of the seller is credited, and the results of the transaction are presented to both buyer and seller. As a result of the invention, a buyer can conduct commercial transactions without having to use any tokens such as portable man-made memory devices such as smartcards or swipe cards. The invention allows buyers to quickly select one of a group of different financial accounts from which to transfer funds. The invention further indicates to the user that the authentic computer system was accessed by the use of a private code that is returned to the buyer after the identification is complete. The invention additionally permits an authorized buyer to alert authorities in the event of an emergency, such as when a transaction is coerced."

Independent claims — plain-language overview

⚠️ Uncertainty flag (please read): In this session I could retrieve the patent's abstract, description, figure text, and family data, but not the verbatim claim set of US 5,870,723 itself. The claim overview below is reconstructed from the abstract, the specification, and the "Definitions"/summary language carried on the Google Patents record. Exact claim numbering, claim count, and exact wording should be confirmed against the USPTO PatentCenter full-text or the issued patent PDF before being relied on. I am not asserting a specific number of independent claims.

Based on that material, the independent coverage appears to be a method claim (and likely a counterpart system/computer-system claim) requiring, in substance:

1. Buyer registration — the buyer registers with the computer system (a) a PIN, (b) at least one biometric sample, and (c) at least one buyer financial account, each account having an account index code assigned by the buyer at registration; the biometric samples, PIN, accounts, and index codes are stored in the computer system.
2. Seller registration — the seller registers at least one seller financial account and is issued a seller identification code.
3. Proposal step — the seller offers a proposed commercial transaction describing the product/service, the price, and the seller's identification code.
4. Acceptance step — the buyer accepts by adding personal authentication information (a bid biometric sample taken from the buyer's person, plus the PIN) and the account index code selecting which registered account to debit.
5. Transmission step — the resulting commercial transaction message is forwarded to the computer system.
6. Buyer identification step — the computer system compares the bid biometric and PIN against previously registered biometrics/PINs and produces either a successful or failed identification. The specification states the identification step completes in under two seconds.
7. Payment step — on successful identification, the computer system identifies the buyer's account from the account index code and the seller's account from the seller identification code, determines the buyer has sufficient resources, and debits the buyer's account and credits the seller's account — or, in the alternative embodiment, constructs a credit authorization draft and forwards it to an external computer system (the specification names VISA International / VISANet as an example) for the money transfer, with the returned status passed back.
8. Presentation step — the results of the operation are presented to the buyer and/or the seller.
9. Tokenless limitation — the transaction is completed without the buyer using any portable man-made memory token (smartcard, magnetic stripe card, etc.), which is the stated point of novelty over the token-based prior art discussed in the specification (e.g., Gullman, U.S. Pat. No. 5,280,527).

Notable features that appear to be claimed in dependent claims rather than the independent claims (again, verify against the actual claim set):

• Silent/duress alarm — an emergency account index code or emergency PIN that lets the transaction proceed while silently alerting authorities; buyer-configurable consequences (artificial resource limits, false data presentation, transaction rejection, notification to authorities or seller).
• System authentication / private code — a private code unrelated to the PIN, never entered by the buyer, displayed back at the end of the transaction so the buyer can detect a fake terminal.
• Account naming — each account index code may carry a name assigned at registration and displayable during authorization.
• Applicant screening — comparing registration biometrics against a database of known fraud perpetrators, and PIN-basket biometric-uniqueness checks, including changing the PIN basket if a biometric is compromised.

Litigation and CAFC 2026 check

• District court (per Google Patents "Family has litigation"): two U.S. cases in the California Northern District Court — case 4:03-cv-03238 and case 3:03-cv-03125 — plus a "First worldwide family litigation" entry via Darts-ip family 24833287.
• CAFC 2026 dockets: my searches surfaced no 2026 Federal Circuit appeal, opinion, Rule 36 judgment, or docket entry identifying US 5,870,723. The 2026 CAFC/PTAB material returned in the searches concerns unrelated patents and parties (e.g., 2025-1487 Inneos v. Opticis; various 2025/2026 IPR institution decisions). I cannot confirm from the sources retrieved that any 2026 CAFC proceeding involves this patent. If you need a definitive negative, that should be confirmed directly against the CAFC docket (PACER/CM-ECF) and the CAFC opinions-and-orders page, which I could not query exhaustively here.
• Note: given the patent's expiration on November 28, 2014, active appellate litigation in 2026 would be unusual, though not impossible (e.g., a collateral validity or damages appeal from an earlier-filed case).

Identifier-handling notes (per your strict rule)

• Some citing documents render the first inventor's name differently — e.g., "Paer, Jr. et al." (Justia listings) and "Parc, Jr. et al." (a Justia reference table). I have not normalized these; they appear literally in those records. The authoritative inventor name on the patent is Pare, Jr., David Ferrin (with Ned Hoffman and Jonathan Alexander Lee).
• The related continuation US 6,192,142 recites a parent as "Ser. No. 08/442,898" while other family members recite "08/442,895." I have not auto-corrected either string — they coexist in the record.
• Related family member US 6,920,435 issued from application 10/120,328 with title "Tokenless biometric electronic transactions using an audio signature to identify the transaction processor" — its claim 1 (quoted in the Official Gazette text retrieved) is a different patent's claim set and should not be conflated with US 5,870,723's claims.

Bottom line: The bibliographic data, abstract, assignee chain, and the general shape of the coverage are well-grounded in the sources retrieved. The verbatim independent claim language and claim count for US 5,870,723 are the items I could not authoritatively verify here, and no 2026 CAFC docket activity tied to this patent number appeared in my searches.

I'll research litigation involving US 5,870,723 using multiple sources.

Let me dig into the specific cases referenced on the patent's Google Patents page.

Caveat on process

I ran multiple searches (including targeted queries for the DARTS/Unified Patents litigation entry, the specific N.D. Cal. case numbers, and Indivos/Excel Innovations/"Pay By Touch" enforcement). The search tool returned a step-limit cutoff mid-investigation, and I was not able to directly pull PACER dockets, the Unified Patents litigation portal page, or the DARTS‑IP family record. What follows separates verified findings from unverified/recalled leads, per the operating rules.

Verified — litigation flagged on the patent's own record

The Google Patents record for US 5,870,723 (fetched 2026‑09‑24) contains an explicit litigation section. It lists:

The record also carries a third, separate entry headlined "First worldwide family litigation filed," attributed to the DARTS‑IP global patent litigation dataset, tied to family 24833287:

https://patents.darts-ip.com/?family=24833287 (via Google Patents)

This DARTS entry indicates the family (the Pare/Hoffman/Lee tokenless-biometric family, i.e., '723 plus its continuations/continuations‑in‑part such as 5,615,277; 5,613,012; 6,012,039; 6,154,879; 6,192,142; 6,239,148; 6,269,348; etc.) has been litigated, but Google Patents does not attribute the DARTS item to a specific case number or party.

Bottom line from the verified record: at minimum two 2003 civil actions in the Northern District of California (3:03‑cv‑03125 and 4:03‑cv‑03238) are associated with this patent's family. The docket-level parties, exact filing dates, and dispositions are not disclosed by the sources I was able to reach, and I will not invent them.

Ownership timeline relevant to when suits could have been filed (verified from the patent record)

• 1997‑01‑16 — assigned to SmartTouch LLC (inventors Pare, Hoffman, Lee as assignors)
• 1998‑10‑22 — assigned to SmartTouch, Inc.
• 2001‑07‑24 — name change to VeriStar Corporation
• 2001‑10‑15 — name change to Indivos Corporation
• 2003‑02‑10 — assigned to Excel Innovations, Inc.
• 2003‑03‑26 / 2003‑11‑26 — assignments to/from AVIV, LLC and back to Excel Innovations
• 2005‑2006 — Indivos d/b/a Pay By Touch (Solidus Networks) acquired the family via judgment of patent ownership; Bank of New York took security interests (2006, 2007)
• 2008‑09‑09 — YT Acquisition Corporation asset sale/purchase (parties: ATMD Acquisition Corp., CheckElect, Inc., Indivos Corp., Pay By Touch Checking Resources, Inc., Seven Acquisition Sub LLC, Solidus Networks d/b/a Pay By Touch)
• 2010‑10‑13 — assigned to Open Invention Network, LLC (assignor: You Technology, Inc.)
• 2014‑11‑28 — anticipated expiration; status "Expired – Lifetime"

The 2003 case numbers align with the Indivos Corporation / Excel Innovations ownership window, which is a reasonable but not verified inference about the plaintiff at filing.

Unverified leads (do NOT treat as confirmed)

• I have not confirmed any specific docketed action in which US 5,870,723 itself was the asserted patent (as opposed to a family member) beyond the two 2003 N.D. Cal. numbers above.
• I have not confirmed any appeal to the Court of Appeals for the Federal Circuit involving '723. My searches returned no CAFC opinion citing it as an asserted patent.
• References to US 5,870,723 in the material I retrieved appeared as prior art / cited documents, not as an asserted patent — e.g., it is cited in the EP 1 081 662 A3 search report, in an Ingrian Networks initial disclosure in Protegrity Corp. v. Ingrian Networks, Inc. (D. Conn.), and as a cited reference on later patents. Those are not litigation against '723.
• The Pay By Touch / Solidus Networks enforcement campaigns of roughly 2006–2008 are widely reported, but I could not verify from the retrieved results that '723 (as opposed to another family member such as 6,012,039 or 6,239,148) was asserted in any of them. Treat any such assertion as unconfirmed.

What I recommend to close the gaps

To obtain party names, filing dates, and outcomes with confidence, the following sources should be checked directly (my searches hit the tool's step limit before I could pull them):

1. PACER / CourtListener RECAP for N.D. Cal. 3:03‑cv‑03125 and 4:03‑cv‑03238 (docket sheets will give caption, filing date, and termination).
2. Unified Patents litigation portal — the two URLs above (they are the feed's own citations).
3. DARTS‑IP family 24833287 page for the worldwide family chart.
4. A Westlaw KeyCite / Lexis litigation-history search on the '723 patent number (the same method described in the USPTO CRU litigation search report format shown in my results), which would catch any case my queries missed.
5. The CAFC docket and opinion search for "5870723" / "5,870,723."

Direct answer to your question

Yes — litigation is known to exist involving this patent family. The patent record itself flags it. Specifically:

• Two N.D. Cal. cases: 3:03‑cv‑03125 and 4:03‑cv‑03238 (jurisdiction: Northern District of California; the Google Patents litigation feed lists both under "Family has litigation").
• A DARTS‑IP entry for family 24833287 ("First worldwide family litigation filed").

I cannot state plaintiff(s), defendant(s), filing dates, or outcomes for these cases with confidence, because the sources I could reach do not disclose those fields and I did not obtain the dockets. I am explicitly declining to fill those fields from memory, since doing so would risk fabricating case captions and results. If you can pull the two PACER dockets or the DARTS family page, I can analyze the resulting records.

I'll start by verifying the structured block's default against live sources, since this patent's prosecution family shows heavy litigation and post-issuance activity history.

The first pass surfaced no proceedings. Let me run targeted searches on the owner chain (Indivos → Pay By Touch → Open Invention Network) and on likely petitioner names.

No hits yet. Let me probe the specific patent page on the Unified Patents portal and search for family-level challenges, plus any CBM filings against the tokenless-biometric family.

PTAB proceedings on file — US 5,870,723

Verification status (read this first). The structured "PTAB proceedings on file" block from the USPTO Open Data Portal returns no AIA trial proceedings for this patent. I then ran independent web searches (petitioner-neutral: patent number, title, assignee chain "Indivos"/"Pay By Touch"/"Solidus"/"YT Acquisition"/"Open Invention Network," and the CBM/IPR docket series) and found no IPR, PGR, or CBM proceeding naming US 5,870,723. I did not identify any proceeding number, so none is reported below — inventing one would be worse than reporting zero. The residual uncertainty is the usual one for pre-2012 filings: CBM practice began 2012-09-16, and I cannot rule out a proceeding that never populated a searchable index. Anyone relying on this should confirm against PTAB E2E (https://ptacts.uspto.gov/) and the PTAB Decisions library (https://www.uspto.gov/patents/ptab/decisions), and against the PatentCenter "Post Grant" tab for the patent.

Proceedings overview

Total AIA trial proceedings on file: 0 — 0 active, 0 with claims invalidated, 0 with claims sustained, 0 settled at the Board, 0 institution denials. The bottom-line defensive posture is therefore the absence case: no claim of US 5,870,723 has been canceled, no claim has been sustained, and every claim is untested at the PTAB, which means a defendant gets neither the benefit of a canceled claim (there is none) nor the burden of Board-confirmed validity — the patent reaches you with its original, unreviewed claim scope.

Because there are no proceedings to iterate over, the per-proceeding template has nothing to fill. What the record does contain is non-PTAB enforcement activity, presented below so the defendant is not misled into thinking the patent is dormant.

Non-PTAB enforcement activity in the structured record (context only — not AIA trials)

• Family has litigation (flag in the Google Patents structured record for US 5,870,723):
  • Filed: 2003 — U.S. District Court, California Northern District Court, case 4:03-cv-03238 — https://portal.unifiedpatents.com/litigation/California%20Northern%20District%20Court/case/4%3A03-cv-03238 (source: Unified Patents Litigation Data, CC BY 4.0).
  • Filed: 2003 — U.S. District Court, California Northern District Court, case 3:03-cv-03125 — https://portal.unifiedpatents.com/litigation/California%20Northern%20District%20Court/case/3%3A03-cv-03125.
  • These are district court dockets, not PTAB proceedings, and the structured record does not name the parties, the asserted claims, or the outcome. I have not verified them further. They are meaningful mainly as historical evidence that the patent was asserted, and that the 2003 campaign (Indivos-era) did not generate a Board challenge to this patent.
• Assignment chain (from the structured record): Individual (original assignee) → SmartTouch LLC (1997-01-16) → SmartTouch, Inc. (1998-10-22) → VeriStar Corporation (2001-07-24) → Indivos Corporation (2001-10-15) → Excel Innovations, Inc. (2003-02-10) → AvIv, LLC (2003-03-26) → back through Excel/Indivos entities (2003) → YT Acquisition Corporation (2008-09-09, asset sale and purchase agreement) → Your Technology, Inc. (2010-09-28) → Open Invention Network, LLC (2010-10-13). Current assignees listed include Open Invention Network LLC, Excel Innovations Inc, and Indivos Corp.
• Term: Publication date 1999-02-09; priority date 1994-11-28; filing date 1996-08-29; the record carries "Anticipated expiration 2014-11-28" and legal status Expired – Lifetime (both expressly flagged as assumptions by the source).

Strategic summary

Claim status: everything is UNTESTED; nothing is canceled and nothing is sustained. There is no Final Written Decision to quote, so I will not characterize any claim as dead, narrowed, or confirmed. For a defendant, that cuts both ways: you cannot move to dismiss on the strength of a prior cancellation, but you also face no adverse Board claim construction and no estoppel bar running against you from an earlier petitioner's loss.

Estoppel landscape: clean slate. IPR/PGR estoppel under 35 U.S.C. § 315(e)(2) and § 325(e)(2) attaches only to a petitioner that obtained a final written decision; CBM estoppel under AIA § 18(a)(1) operates the same way. With no proceedings, no estoppel has been generated by anyone, and no third party's unsuccessful grounds are locked out of your defense. Your full prior-art arsenal is available — district court invalidity under §§ 102/103/112, and an IPR petition on § 102/103 grounds built on patents and printed publications (§ 311(b) limits IPR to those two bases; you cannot run § 101 or § 112 in an IPR). Two structural constraints matter more than estoppel here:

1. CBM is gone. Covered Business Method review was available only for petitions filed before 2020-09-16 (the AIA § 18 eight-year sunset). Whatever the merits of a § 101 attack on this financial-services patent, there is no CBM path left, and PGR is unavailable (the patent issued 1999-02-09, long before the first-inventor-to-file window). IPR is the only AIA trial vehicle available.
2. Expiration. The structured record puts the patent in "Expired – Lifetime" with anticipated expiration 2014-11-28. If that is right, an IPR can still be filed in principle (the Board does institute on expired patents), but the practical calculus shifts: claims of an expired patent are construed under Phillips rather than the broadest reasonable interpretation (the Board follows In re Rambus, 694 F.3d 42 (Fed. Cir. 2012), on this point), the patent owner can no longer amend, and the only exposure elsewhere is back damages subject to the 35 U.S.C. § 286 six-year lookback — no injunctive relief. Because the whole family descends from the 1994-11-28/1996-08-29 priority chain in this record, most members would expire on a similarly early horizon (20 years from the earliest § 120 benefit date, plus any PTA) — but verify each family member's benefit claim and PTA individually; I have not done that and the record's expiration dates are labeled assumptions.

Pattern signals. No repeat petitioner (there are no petitioners); no patent-owner appellate activity from the PTAB (nothing to appeal). The one genuinely notable pattern signal is the ownership endpoint: the patent is now held by Open Invention Network, LLC (assignment recorded 2010-10-13), a defensive patent consortium rather than an operating plaintiff — consistent with the absence of any AIA trial history and with a decade-plus of quiet. The patent also passed through several NPE-shaped entities (Excel Innovations, AvIv, Your Technology) after the Pay By Touch-era assets were sold in 2008, so the "defensive aggregator holds it" status is a recent fact, not a lineage.

One flag on current PTO practice. Reports circulating in 2025–2026 indicate the Office has been denying large numbers of IPR petitions aimed at older patents under a "settled expectations" rationale, and has tightened discretion where a petitioner is in parallel litigation (requiring stipulations, narrowing the "compelling merits" exception). I saw this in an advocacy filing — Unified Patents' amicus brief in Supreme Court No. 25-1230 (https://www.supremecourt.gov/DocketPDF/25/25-1230/[412129](/patent/412129)/20260529145347123_Unified%20Amicus%20Brief%2025-1230.pdf) — which is a one-sided source, not agency guidance. Treat it as a reason to check current USPTO interim guidance before budgeting an IPR on a 1996-priority patent, not as a settled statement of law.

Recommended next steps

• Do not build a defense on a PTAB cancellation — there isn't one. No FWD exists for US 5,870,723, so there is no disposition to link or quote. If opposing counsel or a demand letter asserts that this patent "was invalidated" or "survived IPR," both statements are wrong on the current record.
• Confirm the zero count yourself before relying on it, since this is a negative finding: run the patent number through PTAB E2E (https://ptacts.uspto.gov/), the PTAB Decisions search (https://www.uspto.gov/patents/ptab/decisions), and CourtListener (https://www.courtlistener.com/?q=%225870723%22) for any appeal. A negative is only as good as its sources, and the ODP ingest is, by the framing of this task, potentially incomplete for older filings.
• Attack the term, not just the claims. If the 2014-11-28 expiration holds, front-load a damages-side analysis: what sales fall inside the § 286 six-year window measured backward from the complaint, and is there any § 282/§ 102(b) on-sale-bar or public-use exposure from the Indivos/Pay By Touch commercial deployments (1997–2008) that post-dates the 1996-08-29 filing? That history is largely documented in the specification's own commercial framing and in the assignment chain.
• Identify which patent is actually being asserted. US 5,870,723 is one node in a large family (the record lists dozens of continuations and divisionals, from US 5,613,012 and US 5,615,277 through US 8,260,716, US 9,294,481, and US 10,375,065). A demand letter citing "the tokenless biometric" family may be citing a sibling, not the '723. An IPR on '723 gives you no estoppel leverage against a sibling, and vice versa — each patent needs its own prior-art and term analysis.
• If a petition is contemplated, file it knowing the substantive limits: § 102/§ 103 on patents and printed publications only, no § 101 or § 112, and with an eye to the Phillips construction that will apply to expired claims.

I'll reconstruct this from the assignment data I can verify, starting with targeted searches for the recorded assignment details.

Good — one search surfaced Acacia-assignee-address patterns, but not this patent's reels. Let me dig into the specific assignees.

The related family member US6397198 exposes reel numbers. Let me verify whether those same reels cover US5870723.

Assignment Record Reconstruction — US Patent 5,870,723

Patent: US 5,870,723 B1 — "Tokenless biometric transaction authorization method and system"
Application: 08/705,399 · filed 1996-08-29 · issued 1999-02-09
Priority: 1994-11-28 (continuation of 08/345,523, which issued as US 5,615,277)
Source of record used: Google Patents legal-events feed (usptoAssignments), cross-checked against the patent front page.

Up-front verification caveat: I could not retrieve reel/frame numbers or correspondent-of-record for US 5,870,723 specifically. The Assignment Center record for this patent is not surfaced in the sources reachable to me — only Google Patents' legal-event summaries, which carry assignor/assignee/conveyance/date but omit reel/frame and correspondent. Where reel/frame is quoted below I have explicitly labeled it as unverified for this patent (it comes from a sibling family member, US 6,397,198, and I will not transplant it). No reel/frame or correspondent in this memo should be treated as confirmed for '723.

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Inventors

Unusual pattern — inverted, not the fire-sale kind. The "all inventors leave within 12 months of filing" precursor is not what happens here; the inverse does. Google Patents lists the Original Assignee as "Individual," i.e. the patent issued with no corporate assignee — the three inventors held title personally. All three then assigned to SMARTTOUCH LLC on 1997-01-16, ~4.5 months after filing. Read together, the inventors were the founders of the entity that commercialized the invention, not employees exiting an employer. There is no recorded employer assignment anywhere in the chain preceding the 1997-01-16 event.

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Original assignee

None named on the issued patent. The front page records Original Assignee: "Individual." Title passed to the inventors personally at issue and was formally conveyed to SMARTTOUCH LLC on 1997-01-16.

• Primary line of business of the first corporate owner: biometric payment / tokenless transaction processing. The specification is a complete commercial system specification — Data Processing Center, Gateway and Firewall machines, proprietary Biometric Input Apparatus hardware in four variants, retail/PC/CATV/phone terminal integrations, DUKPT key management per ANSI X9.24, and ISO 8583 external credit/debit messaging. That is an operating-company disclosure, not a bare licensing paper.
• Current status: the operating lineage failed. SmartTouch → renamed Veristar Corporation (2001-07-24) → renamed Indivos Corporation (2001-10-15) → restructured through Excel Innovations, Inc. and Aviv, LLC → adjudicated back to Indivos Corporation, a wholly owned subsidiary of Solidus Networks, Inc., d/b/a Pay By Touch (2006-01-05, "Judgment of Patent Ownership") → sold by asset sale and purchase agreement to YT Acquisition Corporation (2008-09-09). Current assignee of record per Google Patents is Open Invention Network LLC (plus residual listings for Excel Innovations Inc. and Indivos Corp.). Status: dissolved/insolvent as an operating business; patent expired 2014-11-28.

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Assignment timeline

Dates below are Google Patents legal-event dates, which typically correspond to the assignment execution/effective date field. I could not separately verify the execution-vs-recording date pairs, and no reel/frame is confirmed.

• 1997-01-16 — Reel/frame: not retrieved

  • Conveyance: Assignment of assignors' interest
  • Assignor: Ned Hoffman; David Ferrin Pare, Jr.; Jonathan Alexander Lee
  • Assignee: SMARTTOUCH LLC
  • Correspondent: not retrieved
  • Context: Founders' entity formation — inventors convey personally-held title to their own operating company.

• 1998-10-22 — Reel/frame: not retrieved

  • Conveyance: Assignment of assignors' interest
  • Assignor: SMARTTOUCH, LLC
  • Assignee: SMARTTOUCH, INC.
  • Correspondent: not retrieved
  • Context: Internal corporate reorganization, LLC to Inc.

• 2001-07-24 — Reel/frame: not retrieved

  • Conveyance: Change of Name
  • Assignor: SMARTTOUCH, INC.
  • Assignee: VERISTAR CORPORATION
  • Correspondent: not retrieved
  • Context: Change of name only — no change in economic ownership.

• 2001-10-15 — Reel/frame: not retrieved

  • Conveyance: Change of Name
  • Assignor: VERISTAR CORPORATION
  • Assignee: INDIVOS CORPORATION
  • Correspondent: not retrieved
  • Context: Change of name only.

• 2003-02-10 — Reel/frame: not retrieved

  • Conveyance: Assignment of interest
  • Assignor: INDIVOS CORPORATION
  • Assignee: EXCEL INNOVATIONS, INC.
  • Correspondent: not retrieved
  • Context: Internal restructuring — operating company into a holdings-style vehicle; begins the 2003 churn.

• 2003-03-26 — Reel/frame: not retrieved

  • Conveyance: Assignment
  • Assignor: EXCEL INNOVATIONS, INC.
  • Assignee: AVIV, LLC
  • Correspondent: not retrieved
  • Context: Internal restructuring / financing-related transfer, three weeks into the 2003 cluster.

• 2003-08-11 — Reel/frame: not retrieved

  • Conveyance: Merger
  • Assignor: INDIVOS CORPORATION
  • Assignee: INDIVOS CORPORATION
  • Correspondent: not retrieved
  • Context: Internal merger of Indivos entities.

• 2003-09-03 — Reel/frame: not retrieved

  • Conveyance: Assignment
  • Assignor: INDIVOS CORPORATION
  • Assignee: EXCEL INNOVATIONS, INC.
  • Correspondent: not retrieved
  • Context: Internal restructuring — reversal of direction from the 2003-02-10 record.

• 2003-09-16 — Reel/frame: not retrieved

  • Conveyance: Annulment of Assignment
  • Assignor: INDIVOS CORPORATION, A DELAWARE CORPORATION
  • Assignee: INDIVOS CORPORATION, A DELAWARE CORPORATION
  • Correspondent: not retrieved
  • Context: Correction of a defective link — a prior recorded assignment in this chain was annulled, which is a chain-of-title repair, not an economic transfer.

• 2003-11-26 — Reel/frame: not retrieved (three separate recordings bearing this date)

  • Conveyance: Assignment of interest
  • Assignor: AVIV, LLC
  • Assignee: EXCEL INNOVATIONS, INC.
  • Correspondent: not retrieved
  • Context: Internal restructuring — closing the Aviv, LLC loop opened on 2003-03-26.

• 2006-01-05 — Reel/frame: not retrieved

  • Conveyance: Judgment of Patent Ownership
  • Assignor: EXCEL INNOVATIONS, INC.
  • Assignee: INDIVOS CORPORATION, A WHOLLY OWNED SUBSIDIARY OF SOLIDUS NETWORKS, INC., D/B/A PAY BY TOUCH
  • Correspondent: not retrieved
  • Context: Litigated ownership outcome — title settled by court judgment rather than by negotiated transfer.

• 2006-02-16 — Reel/frame: not retrieved

  • Conveyance: Grant of Patent Security Interest (under Amended and Restated Patent Security Agreement)
  • Assignor: INDIVOS CORPORATION
  • Assignee: THE BANK OF NEW YORK, AS COLLATERAL AGENT
  • Correspondent: not retrieved
  • Context: Securitization — portfolio pledged as collateral for venture/credit financing.

• 2007-12-20 — Reel/frame: not retrieved

  • Conveyance: Grant of Patent Security Interest
  • Assignor: INDIVOS CORPORATION
  • Assignee: THE BANK OF NEW YORK, AS AGENT, AS SECURED PARTY
  • Correspondent: not retrieved
  • Context: Securitization — second, restructured lien grant.

• 2008-09-09 — Reel/frame: not retrieved

  • Conveyance: Asset Sale and Purchase Agreement
  • Assignors: ATMD ACQUISITION CORP.; CHECKELECT, INC.; INDIVOS CORPORATION; PAY BY TOUCH CHECKING RESOURCES, INC.; SEVEN ACQUISITION SUB, LLC; SOLIDUS NETWORKS, INC. D/B/A PAY BY TOUCH
  • Assignee: YT ACQUISITION CORPORATION
  • Correspondent: not retrieved
  • Context: Distressed asset sale — five affiliated debtor-side assignors conveying as a bloc is the documentary signature of an insolvency disposition, not a strategic divestiture.

• 2010-09-28 — Reel/frame: not retrieved (two concurrent recordings)

  • Conveyance: Release by Secured Party — First Lien Grant; and Release by Secured Party — Second Lien Grant
  • Assignor: THE BANK OF NEW YORK, AS ADMINISTRATIVE AND COLLATERAL AGENT
  • Assignee: YOUR TECHNOLOGY, INC. (F/K/A YT ACQUISITION CORPORATION)
  • Correspondent: not retrieved
  • Context: Securitization unwind — liens cleared so clean title could be conveyed.

• 2010-10-13 — Reel/frame: not retrieved

  • Conveyance: Assignment of interest
  • Assignor: YOU TECHNOLOGY, INC.
  • Assignee: OPEN INVENTION NETWORK, LLC
  • Correspondent: not retrieved
  • Context: Transfer to defensive aggregator — the terminal event in the chain.

• 2014-11-28 — Anticipated expiration (Google Patents legal status: Expired – Lifetime).

Unverified reel/frame data (do not attribute to '723): the sibling family member US 6,397,198 shows recordation practice for the same corporate chain — REEL/FRAME 010993/0150 (SmartTouch, Inc. assignment, effective 1999-07-20), 012010/0454 (Veristar change of name), 012263/0077 (Indivos change of name), and 021502/0001 (YT Acquisition asset sale, effective 2008-03-28). These are family-level recordings for a different patent; I flag them only as the probable reels for the same transactions and explicitly decline to assert they cover '723.

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Timeline diagram

timeline
    title Ownership of US 5870723
    1994 : Priority application filed
    1996 : Filed by three individual inventors
    1997 : Assigned to SmartTouch LLC
    1998 : Transferred to SmartTouch Inc
    2001 : Name change to Veristar Corporation
         : Name change to Indivos Corporation
    2003 : Six transfers among Indivos Excel Aviv
         : Annulment of a recorded assignment
    2006 : Judgment of patent ownership to Indivos
         : Security interest to Bank of New York
    2007 : Second security interest granted
    2008 : Asset sale to YT Acquisition Corp
    2010 : Releases by secured party
         : Assigned to Open Invention Network
    2014 : Patent expired

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NPE / troll-pattern signals

1. Shell-entity transfer — unclear. The 2003 cluster moves title from the operating company Indivos Corporation into EXCEL INNOVATIONS, INC. (2003-02-10) and AVIV, LLC (2003-03-26), then back (2003-11-26) — naming consistent with licensing/holding vehicles. But the required corroboration is absent: I found no evidence of products-in-commerce status for either entity and no evidence they lacked products, no registered-agent address, and no single-member LLC confirmation. Complicating the inference: Aviv, LLC sits between two Bank of New York collateral grants (2006-02-16, 2007-12-20), so the Aviv link is at least as consistent with a financing/collateral structure as with a licensing shell. Not a finding on the current record.

2. Known asserter in the chain — not present. No assignee in this chain matches Acacia Research Corp, Marathon Patent Group, Intellectual Ventures, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp, or the enumerated Spangenberg entities. The terminal assignee, Open Invention Network LLC, is a defensive aggregator, not an asserter. Note the tail position: an Acacia-family litigation exhibit does show a Monarch Networking Solutions LLC chain touching Acacia-address Frisco, Texas entities (REEL/FRAME 055101/0608, correspondent S. Kareff c/o Schulte Roth & Zabel, 919 Third Avenue, New York) — but that is an unrelated patent matter and I am explicitly not attributing it to '723.

3. Repeat correspondent across the chain — unclear (data gap). This is the signal I was best positioned to test and could not. No correspondent-of-record was retrievable for any of the 15 recorded events on '723. Per your own rule, a single appearance is not a finding and recurrence is the test — with zero correspondent data points, there is nothing to score. If you pull the actual Assignment Center abstracts, the highest-value targets are the 2003-02-10 / 2003-03-26 / 2003-11-26 Excel Innovations ↔ Aviv recordings and the 2010-10-13 OIN recording, since a recurring filing attorney across those would be the cleanest shell-network tell available.

4. Cascading transfers — present. Six recordings across three entities in ~9.5 months: 2003-02-10 (Indivos → Excel Innovations), 2003-03-26 (Excel Innovations → Aviv, LLC), 2003-08-11 (Indivos merger), 2003-09-03 (Indivos → Excel Innovations), 2003-09-16 (Annulment of Assignment by Indivos Delaware), 2003-11-26 (three Aviv, LLC → Excel Innovations recordings). This comfortably meets "multiple consecutive assignments through chained LLCs in <24 months." Two qualifiers keep the weight moderate rather than maximal: (a) the participants are the same corporate family and a related financing structure rather than unrelated LLCs, and (b) the 2003-09-16 annulment shows part of the churn was chain-of-title repair, not economics.

5. Pre-litigation transfer — unclear. Two N.D. Cal. actions are indexed to this family (3:03-cv-03125 and 4:03-cv-03238, both 2003; Google Patents also links a Darts-IP "first worldwide family litigation" record). The 2003-02-10 and 2003-03-26 transfers fall inside a plausible six-month window before 2003 filings. But I cannot confirm that US 5,870,723 itself was a patent-in-suit, and the 2003 filings are equally attributable to Indivos as an operating plaintiff. Marked unclear rather than present — this needs the actual 2003 complaints.

6. Bankruptcy fire-sale — present (asset-sale mechanism confirmed; Chapter filing not evidenced). The 2008-09-09 "ASSET SALE AND PURCHASE AGREEMENT" names six assignors as a bloc — ATMD Acquisition Corp., CheckElect, Inc., Indivos Corp., Pay By Touch Checking Resources, Inc., Seven Acquisition Sub, LLC, and Solidus Networks, Inc. d/b/a Pay By Touch — conveying to YT Acquisition Corporation. That multi-debtor structure, bookended by collateral grants to The Bank of New York (2006-02-16, 2007-12-20) and secured-party lien releases (2010-09-28), is the documentary shape of a distressed disposition. Caveat: the assignment abstracts do not themselves evidence a Chapter 7 or Chapter 11 petition; the fire-sale mechanic is present in the record, the bankruptcy filing is not proven by this chain.

7. Privateering — not present. No evidence the operating company transferred to an NPE that asserted on its behalf against competitors. The operating-era plaintiff posture (2003 N.D. Cal. cases) attaches to Indivos, the operating company itself, and the chain's terminal event is a defensive assignment, not an assertion vehicle.

8. Defensive aggregator — present. 2010-10-13: YOU TECHNOLOGY, INC. → OPEN INVENTION NETWORK, LLC. OIN is named directly on your defensive-aggregator list. The conveyance is a straight assignment of interest by the post-bankruptcy purchaser, following the 2010-09-28 first- and second-lien releases by secured party that were required to deliver clean title. This is the inverse signal: the patent was neutralized. Compounding it, Google Patents records anticipated expiration 2014-11-28 and legal status Expired – Lifetime, so the asset is now both neutralized and time-barred.

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Verdict

Defensive / non-asserting (chain terminates at a defensive aggregator).

The chain's final economic event is the 2010-10-13 assignment from You Technology, Inc. to OPEN INVENTION NETWORK, LLC, a defensive aggregator on your enumerated list, executed only after The Bank of New York released its first- and second-lien grants on 2010-09-28 to clear title. That terminal placement, plus the recorded 2014-11-28 anticipated expiration and Expired – Lifetime status, means the patent is neutralized on both ownership and term grounds. The mid-chain evidence runs the other way and deserves acknowledgment — the 2003 churn of six recordings across Indivos, Excel Innovations, and Aviv, LLC (2003-02-10 through 2003-11-26, including a 2003-09-16 annulment) is genuine cascading-transfer behavior, and the 2008-09-09 six-assignor asset sale to YT Acquisition Corporation is a distressed-sale signature — but neither reached an asserter, no named NPE ever held title, and the distressed mechanic lacks a proven Chapter filing in the record.

Verification link: https://assignment.uspto.gov/patent/index.html#/patent/search?q=5870723 (search "5870723"; the Assignment Center UI at https://assignmentcenter.uspto.gov/ surfaces the same underlying reel/frame records)

Two things I could not establish and would not guess at: (a) the reel/frame numbers and execution-vs-recording date pairs for any of the 15 events — the sibling-family reels I found (010993/0150, 012010/0454, 012263/0077, 021502/0001) belong to US 6,397,198 and are not confirmed to cover '723; and (b) the correspondent of record on every event, which is precisely the field that would resolve signal 3. If you can supply the Assignment Center abstracts for '723, the correspondent names on the four 2003 recordings and the 2010 OIN recording are the entries that would either confirm or dissolve the residual shell-network question.

I'll research US patent 5,870,723 and its cited prior art references.

Let me look specifically at the front-page "References Cited" section of US5870723.

The snippet searches aren't surfacing the front-page citation list. Let me target the citation table directly.

1. Patent identification (as searched, interpreted literally)

The identifier 5870723 corresponds to US 5,870,723 A, and I treated it literally — I did not normalize or substitute any other number.

2. Important limitation on what I could retrieve — stated plainly

The supplied authoritative full text is a rendered Google Patents page. It does not contain the front‑page "References Cited" / "U.S. Patent Documents" citation table, nor the claim set. The OCR of the page jumps from the classification list to the "Definitions" block; the examiner-cited prior art table is absent.

I attempted several targeted searches for the citation table (Google Patents "Patent Citations," EPO search reports, PCT search-report annexes). Those searches returned:

• Forward citations — later patents that cite US5870723 as prior art against themselves (e.g., EP 1 081 662 A3's search report lists "US 5870723 A 19990209 – PARE JR DAVID FERRIN [US], et al"; WO2002103643A3; WO2000051084A1; WO2011033137A1; the "Cited By (170)" list on US6366682). These run in the opposite direction from what you asked for and cannot anticipate US5870723.
• Family members (US5613012A, US5615277A, US5764789A, US5802199A, US5805719A, US5838812A) — these are commonly-owned relatives, not §102 art against 5870723 (they share the same priority chain).

I therefore do not have a verified list of the prior-art references cited during prosecution of US5870723. I will not invent patent numbers or attribute subject matter to references I cannot verify. Below I give (a) what the authoritative text does identify, and (b) exactly how to obtain the definitive citation list.

3. References actually identified within the authoritative text of US5870723

A. Patent documents expressly named in the specification

1. The background section contains the sentence: "Examples of this approach to system security are described in U.S. Pat. Nos." — the numbers themselves are missing from the rendered text. This is the one place the patent cites specific patent prior art (the "smartcard with stored biometric or PIN" line of art), and it is exactly the passage that needs to be verified from the granted document.
2. Parent/priority documents expressly named in the record: US08/345,523 (filed 1994-11-28, granted as US5615277) and US08/442,895 (filed 1995-05-17, granted as US5613012). These are §102(e)/§103 common-ownership relatives, not independent anticipating art.
3. Foreign/family: PCT/US1997/015171 → WO1998009227A1; AU4329597A.

B. Non-patent prior art / standards and commercial references named in the text (relevant to §102(b) printed-publication and to claim construction)

• ANSI X9.24 — "DUKPT is fully specified in ANSI X9.24" (key management).
• ISO 8583 — authorization message / financial transaction message pairs used for drafts.
• DES (Data Encryption Standard), 112-bit keys, CBC mode, MAC sealing.
• RSA public-key patent, Public Key Partners (named as holder).
• VeriSign, Inc. — named as a Certifying Authority.
• Verifone Tranz/330 — named as an example retail point-of-sale terminal; Verifone, Inc. PIN-pad interfaces named as a compatibility target.
• Commercial/industry practice described in the background (magnetic-stripe card fraud, Trojan-horse ATMs, smartcard cost estimates) — background context, generally not itself anticipating art.

4. On the §102 analysis you requested — what is and is not possible here

Section 102 anticipation requires a single reference disclosing every element of a claim, arranged as in the claim; §103 requires the reference(s) plus an articulated reason to combine. Two prerequisites are missing from my current evidence base:

1. The claim set of US5870723. It is not in the supplied text, so I cannot state which claims a given reference "potentially anticipates." (Based on the specification's summary, the independent claims are directed to a tokenless buyer registration step storing a PIN, biometric sample(s), and account(s) with buyer-assigned account index codes; a seller registration step assigning a seller identification code; proposing a transaction containing a seller identification code; buyer acceptance by adding a biometric sample plus PIN plus account index code; transmission; identification by comparison in a computer system operationally isolated from the buyer; and debiting/crediting the identified accounts — with dependent subject matter for silent-alarm/emergency index codes, the private code presented back to the buyer, DUKPT/DES encryption and MAC sealing, remote-buyer/Internet embodiments, and the PIN-basket biometric deduplication. These should be treated as my summary of the disclosure, not as verified claim language.)
2. The examiner-cited citation list, i.e., the actual candidate §102 art.

Because of (1) and (2), the only intellectually honest answer to "which claims does each cited reference anticipate" is: that mapping cannot be completed from the evidence I have, and I am not going to fabricate it.

5. How to obtain the exact list (definitive sources)

• USPTO PatentCenter for application 08/705,399 → Documents & Transactions → the PTO‑892 "List of references cited by examiner" and the IDS (PTO‑SB/08) submissions. These are the authoritative citation records.
• USPTO Patent Full-Text (patft/PPUBS) and Google Patents "Patent Citations" tab for US5870723A.
• EPO Global Patent Index / Espacenet for WO1998009227A1 — the PCT ISA search report lists the art the examiner considered relevant (categories X/Y/A), which is the closest thing to an anticipation mapping.
• Note the family shows US litigation in the Northern District of California (case nos. 4:03‑cv‑03238 and 3:03‑cv‑03125); pleadings and IPR/invalidity contentions in those cases typically contain the most detailed §102/§103 art charts against this patent.

6. What I can say with confidence

• US5870723 is real, expired, and is the priority-bearing "tokenless biometric transaction authorization" patent of the SmartTouch/Pay By Touch family; its own broad claims are the ones later litigated and cited against others (EP 1 081 662, WO 02/103643, WO 00/51084, WO 2011/033137, etc.).
• Its most pertinent prior art is (i) the shared-priority family members US5615277/US5613012, and (ii) the smartcard-with-stored-biometric art the specification points to but whose numbers are missing from the rendered text, plus (iii) the pre-1995 token/biometric-payment field generally (biometric-token and portable-fingerprint-scanning patents) — but item (iii) is a field characterization from my background knowledge, not a verified citation list, and must be confirmed against the PTO‑892 before being relied on for any §102 mapping.

If you paste the front-page "References Cited" table (or the PTO‑892 / PCT search report for WO1998009227A1), I will produce the reference-by-reference table with full citation, publication/filing date, brief description, and a claim-by-claim §102 analysis against the actual issued claims.

Sources relied on: the authoritative full text at https://patents.google.com/patent/US5870723/en (supplied), and search results including https://patents.google.com/patent/US6366682#13, http://data.epo.org/gpi/EP1081662A3, https://patentimages.storage.googleapis.com/63/f9/53/301979e336b893/WO2002103643A3.pdf, https://patentimages.storage.googleapis.com/a6/13/09/dbeb27fd246b02/WO2000051084A1.pdf, and the USPTO Official Gazette entry for US 6,920,435 (continuity chain).

I'll research the prior art references on the face of US 5,870,723 to ground the § 103 analysis.

Let me retrieve the patent's own front-page references and claim text.

Obviousness Analysis — US 5,870,723 under 35 U.S.C. § 103

⚠️ Process note before the analysis. The search tool hit its step limit during this task, so the reference list below is partial. Two things are firmly grounded and two are not, and I flag them up front rather than paper over them:

1. Verbatim claim text of '723 is still not in hand. The earlier section of this analysis flagged this and it remains true. This § 103 analysis therefore maps the reconstructed claim elements (from the abstract, the specification's own summary paragraphs, and the parallel claim language of the family — e.g., the EP 0912959 B1 "PIC-basket" claims and the US 2004/0020982 family text) rather than the literal claim set. Any element-by-element conclusion below should be re-run against the issued claims before being relied on in a validity contention.
2. The reference list I could verify is real but incomplete. The strongest, verifiable ground below rests on references I retrieved with dates: Gullman US 5,280,527; Berson US 5,469,506; Piosenka US 4,993,068; Weiss US 4,998,279 / US 4,720,860. Additional references (Sime US 5,386,104; Drexler US 5,412,727; Brunelli US 5,412,738, etc.) surfaced only as entries in third-party "References Cited" tables and I could not independently confirm their disclosure content.
3. Contradiction flag (carried forward). The previously generated summary stated that '723's specification cites "e.g., Gullman, U.S. Pat. No. 5,280,527." In the fetched '723 text supplied to me, that list is truncated ("Examples of this approach to system security are described in U.S. Pat. Nos."). The Gullman characterizations I rely on below are verbatim from the family's parallel documents (JP 2002-541533 A; US 2004/0020982 A1) — I could not confirm the Gullman string in '723's own printed specification. Treat the citation as family-documented, not '723-verified.

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1. Governing framework and effective date

Practical benefit of the CIP posture: even if the 1994 date is lost on some claims, the 1996-08-29 date opens a materially larger art window (any reference that issued or published before 1995-08-29 and, for § 102(b), before 1995-08-29). Berson (issued 1995-11-21) is not § 102(b) art but is § 102(a)/(e) art on either date — see § 3.

PHOSITA (proposed). A person with a bachelor's degree in electrical engineering or computer science (or equivalent) and 2–4 years' experience designing or deploying electronic payment terminals and/or access-control systems; familiar with POS/ATM payment messaging (ISO 8583), PIN management, DES/DUKPT key management (ANSI X9.24), magnetic-stripe and smartcard systems, and the contemporaneous biometric literature. The Berson patent's own citation to "Vital Signs of Identity," IEEE Spectrum, pp. 22–30 (Feb. 1994) is useful, dated evidence of the biometric state of the art before 1994-11-28.

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2. What '723 actually adds — and what the specification admits is old

It is important for the § 103 posture that the '723 specification admits as known:

• Token-based credit/debit transactions, PIN-based debit, Trojan-horse ATMs, PIN observation, counterfeit-card manufacture.
• Smartcards carrying a biometric or a PIN, where the user "physically enter[s] the requested biometric, which is then compared to the authenticated biometric on the token."
• ISO 8583 authorization + financial-transaction message pairs; VISANet and MAPP as external systems; draft versus debit transaction types.
• DES with 112-bit keys, DUKPT (ANSI X9.24), RSA public-key exchange (citing Public Key Partners), and VeriSign as a certifying authority.
• Verifone PIN-pad command interfaces and the Verifone Tranz/330 terminal.
• The stated purpose of the PIN-basket: the PIN "is used to reduce the number of buyers checked by the biometric comparison algorithm."

Admitted prior art needs no further proof and is freely combinable. This materially narrows the space in which non-obviousness must be found — essentially the "tokenless" limitation and the private-code / duress refinements.

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3. Verified prior-art references (with dates and § 102 status vs. 1994-11-28)

Corroborating secondary evidence that the family's own disclosures operate as prior art: In Ex Parte Waters (BPAI, 2007) the Board wrote: "We concur with the examiner's determination that Pare is prior art." (law.onecle.com). And in IPR2022-01045, ASSA ABLOY AB v. CPC Patent Technologies PYT Ltd., the petitioner's Exhibit 1012 maps claim elements to a Pare/Hoffman/Lee family patent (referred to in the petition as "Hoffman"), citing "IBD individual biometric database," "DPC," "BIA," "BRT," "biometric-PIC," "private code," "duress account access," and "PIC basket" (DockerAlarm exhibit). ⚠️ I have not confirmed which family member "Hoffman" is; do not rely on the identity of that reference without checking the exhibit.

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4. Ground 1 (primary): Gullman in view of Berson — the "tokenless" limitation

This is the strongest § 103 ground because it attacks the one element the applicant relies on for novelty.

4.1 Element-by-element

4.2 Why the "tokenless" limitation would have been obvious

1. Gullman's own method claim 8 does not recite a token. Claim 8 is: receiving a user's biometric input; comparing the biometric input with a stored template to generate a correlation factor; comparing the correlation factor with acceptance threshold data to generate a transmittable code; transmitting the code to the host; determining at the host whether to grant access. The location of the "stored template" is unrecited. Moving that template from the card to the host's database is, on the face of the claim, a change in data location, not in the method. That is a classic "predictable variation" under KSR.

2. Gullman itself points toward the tokenless variant. It states that an invalid token "allows the host system to record the unsuccessful attempt," that the token "could even be input from a telephone or computer at a remote location," and that the token output may be transmitted directly to the host "through a direct data communication line, eliminating the need for manual entry." Once the host is already receiving the token over a data line, replacing the card-resident template with a host-resident template is a design choice between two known arrangements for storing the same information.

3. Berson supplies an explicit, articulated motivation. Berson states the object of its invention is to overcome the prior art's "serious opportunity for a breach of security ... by bypassing the scanner" and the risk that "a photograph of a fingerprint ... would be substantially identical to the digital signal produced by the scanner." Berson thus teaches that the security of a token-based scheme is compromised by the token and that the fix is to make the comparison apparatus, not the token, the trusted element. A PHOSITA reading Gullman (token-based) together with Berson (token is a vulnerability; comparison should be secured) would be motivated to relocate the template and the comparison to the trusted host — i.e., to remove the token.

4. The specification's own admission of the "smartcard-with-biometric" art. The '723 background expressly describes prior systems where "authenticated biometrics are recorded ... and stored for future reference on a token" and "the user is required to physically enter the requested biometric, which is then compared to the authenticated biometric on the token." The difference the applicant asserts is only the storage location and the isolation of the verification process. Under KSR, "where a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious."

5. Rational motivation is present in the references themselves. Both Gullman and Berson are in the same field of endeavor (biometric verification for access to a financial/computer host) and address the same problem (fraud-resistant identification). That satisfies the "analogous art" and "reasonable expectation of success" prongs; the combination is a mere substitution of one known location-of-storage for another.

4.3 Anticipated rebuttal — the "teaching away" argument, and why it is weak post-KSR

The '723 specification (in the family's parallel language) asserts: "Uniformly, the above patents that disclose commercial transaction systems teach away from biometric recognition without the use of tokens. Reasons cited for such teachings range from storage requirements for biometric recognition systems to significant time lapses in identification of a large number of individuals, even for the most powerful computers." (US 2004/0020982 A1, ¶[0013].)

Assess this honestly:

• A "storage requirements" / "time-lapse" teaching away is an enablement/engineering objection, not a teaching away from the concept. Under In re Fulton and KSR, "the prior art's mere disclosure of more than one alternative does not teach away." Arguably the art said "1:N tokenless search is expensive," not "it is inoperative." That is precisely the kind of engineering obstacle a PHOSITA is expected to overcome with known techniques (binned/PIN-indexed searches — a technique the applicant's own spec admits was used to "reduce the number of buyers checked").
• Gullman undercuts the "uniformity" claim. Gullman's method claim 8 recites no token, and Gullman expressly contemplates direct host transmission. A reference cannot "teach away" from a variant that its own claims embrace.
• Berson affirmatively teaches toward removing the token from the trust path.
• Countervailing force: a fact-finder could credit the "teaching away" narrative if Gullman's specification, read as a whole, made the card the essential element of the invention (it does say the card "serves as a convenient accessible security device kept in the possession of a person seeking access" and that the correlation factor, fixed code and time code are all combined on the card). Expect the applicant to argue Gullman's invention is the device, not the method. This is a genuine, contestable point — I would not rate Ground 1 as a slam dunk on the present record, particularly without the issued claim text.

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5. Ground 2: Gullman + Berson + a central-biometric-database / 1:N identification reference

Ground 1 leaves the "computer system compares the bid biometric with previously registered biometric samples [plural] ... producing either a successful or failed identification" element resting on Gullman's decode-the-correlation-factor step. If the issued claims require an identification (1:N or 1:few) search at a remote host, add a reference teaching central-database biometric identification.

⚠️ Honest limitation: in the searches I completed I did not verify a specific pre-1994 patent whose disclosure I can quote for a central biometric database searched by a PIN/key. Candidates that surfaced but which I could not confirm as to disclosure are US 5,163,094 (Prokoski, "Method for identifying individuals from analysis of elemental shapes derived from biosensor data"), US 5,055,658 (Cockburn, "Security system employing digitized personal physical characteristics"), and the well-documented, non-patent AFIS (Automated Fingerprint Identification System) deployments. Do not plead these without verification.

What I can ground: the applicant's own admission that the PIN is used to "reduce the number of buyers checked by the biometric comparison algorithm," and the family's own description of the PIN-basket mechanism (EP 0912959 B1, ¶¶[0045]–[0047]). Combining Gullman (biometric + PIN → host decides) with Berson (secure host-side comparison of a live biometric against a stored metric) and the admitted PIN-binning technique yields a prima facie case that remote, PIN-indexed biometric search was a known, motivated combination — the only asserted difference being the scale of the database.

Motivation: the '723 spec identifies the goal as operating "at speeds similar to those currently in operation for financial transactions," i.e., under two seconds. The applicant's own solution to that problem — bin by PIN — is an admitted, routine indexing technique. Where the asserted novelty is the speed of a known comparison accomplished by a known indexing method, KSR controls ("a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions").

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6. Ground 3: Gullman/Berson + ATM-fraud art — the duress and private-code dependent claims

These are the fallback grounds for the dependent-claim refinements, and they are weaker.

(a) Silent/duress alarm (emergency account index code / emergency PIN). The concept of a duress code that initiates a transaction normally while silently signalling authorities is a long-standing ATM/bank-alarm concept. I could not verify a specific pre-1994 duress-code patent in this session — Sime US 5,386,104 ("System and method for detecting user fraud in automated teller machine transactions") is the closest candidate but I have neither its filing date nor its disclosure text. ⚠️ Do not assert it without verification. Theoretically, however, if any verified ATM reference discloses a duress/panic code, then the '723 refinement (implementing the duress trigger as an alternate account index code rather than an alternate PIN) is a mere reversal/substitution of two known duress-trigger mechanisms — the kind of "predictable variation" KSR condemns.

(b) Private code returned to the buyer to authenticate the system. This is mutual authentication. Gullman's host-issued "challenge code" already establishes a host↔device authentication dialogue. Personalizing a terminal response (displaying a greeting or code known only to the user) is an obvious anti-phishing/skimming measure. The '723 spec's stated purpose for the private code — detecting a "fake station" — is exactly the threat Berson describes ("collusion with an operator," "bypassing the scanner"). Motivation is supplied by Berson. This is a reasonably strong ground if a host-challenge reference is combined.

(c) Account-name display. Displaying a name for an account selected by index is a user-interface convenience at ATMs, which were already menu-driven. KSR: predictable use of a known element.

(d) PIN-basket biometric-uniqueness checks and re-binning after compromise. Motivated by the admitted speed constraint and by the acknowledged need for fraud resistance; the "re-binning" step is a data-management operation with no asserted structural change.

(e) Registration-batch against known fraudsters; issuer batch submissions. Database cross-checking is routine; the spec itself frames it as a screening step.

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7. Structure of the strongest composite ground

If I had to frame a single § 103 ground with the best chance of success on the verified record, it would be:

Claim 1 (and its system counterpart) is obvious under § 103(a) over Gullman US 5,280,527 in view of Berson US 5,469,506, and further in view of the applicant's admitted prior art (ISO 8583 / VISANet, DUKPT, DES, and ATM account selection).

The mapping is: Gullman teaches every affirmative step (registration, proposal, biometric + fixed-code acceptance, host transmission, host decision, funds transfer). Berson supplies both (i) the host-side comparison of a live biometric against a stored metric and (ii) the articulated motivation to remove the token from the trust path. The admitted prior art supplies the multi-account selection, the draft/debit distinction, and the external authorization network. The sole remaining element — "without any portable man-made memory token" — is a negative limitation met by simply not using the element that Gullman discloses as optional in its claimed method and that Berson teaches is a security liability.

For the dependent claims, add: Gullman's challenge code (private code), Berson's operator-collusion/scan-bypass threat (private code rationale; fraud screening), and — subject to verification — an ATM duress-code reference (silent alarm).

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8. Secondary considerations (the other Graham factor)

These cut both ways, and I will not overstate them:

Favoring non-obviousness (patentee):

• Commercial success / industry adoption. The Pay By Touch / Solidus Networks deployment (2005–2008) is widely reported as a real point-of-sale biometric deployment. If a nexus to the claimed subject matter can be shown (rather than to marketing or to unrelated business factors), this is meaningful.
• Licensing / acquisition activity. The assignment chain shows real market value being exchanged (Excel Innovations / AVIV, Indivos, YT Acquisition, OIN), though much of that reflects distress (the 2006 "judgment of patent ownership" and the 2008 asset sale) rather than a robust royalty market.
• Industry praise / skepticism overcome. The spec frames the art as uniformly teaching away from tokenless biometrics — if corroborated by contemporaneous literature, that is a "teaching away" and "unexpected results" argument.

Favoring obviousness (challenger):

• The "teaching away" is only as strong as Gullman's disclosure allows — and Gullman's method claim 8 is token-agnostic, which substantially undercuts a uniform-teaching-away narrative.
• Long-felt need is asserted, not proven. The spec repeatedly asserts needs ("There has long been a need...") but supplies no corroborating evidence of failed attempts by others.
• Expiration (2014-11-28) and the 2010 assignment to Open Invention Network (a defensive-licensing entity) mean any 2026 invalidity challenge would be retrospective — likely in the context of an expired-patent IPR or a damages defense over pre-2014 conduct. Note the OIN assignment makes fresh enforcement unlikely.

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9. Confidence assessment (per your strict rule — I say what I do not know)

Bottom line. On the references I could verify, there is a credible § 103 case that the core tokenless-authorization method of '723 would have been obvious as of 1994-11-28 over Gullman US 5,280,527 in view of Berson US 5,469,506, with the residual elements supplied by the specification's own admissions (ISO 8583/VISANet, DUKPT/DES, ATM account selection). That ground is strongest on the independent claims and weakest on the duress and private-code dependents, where I could not verify the necessary secondary references. Before this analysis is used for any filing or contention, three things must be closed: (1) obtain the issued claim text; (2) verify the filing dates and disclosures of Sime US 5,386,104 and at least one central-biometric-database reference; and (3) confirm whether Gullman is cited on the face of '723 or only in the family.