A Curious Apple Patent
FedInvent Patent Newsletter December 21, 2021
Hello from FedInvent,
On Tuesday, December 21, 2021, the US Patent Office granted 4,826 patents. One hundred nine (109) benefitted from taxpayer funding.
For those of you who want to start with the data, here is the link to the FedInvent Patent Report for December 21, 2021. If you prefer to browse by funding department, start here.
The Curious Story of the Apple Checkpoint ID Patent
On Tuesday, Apple Inc. of Cupertino, CA received US Patent 11206544, "Checkpoint Identity Verification on Validation Using Mobile Identification Credential." The patent allows you to use a digital credential stored on your smartphone for identity verification at a checkpoint like the TSA security checks at airports. The invention is a mobile driver's license (mDL) with additional security and information sharing features.
Today we'll start the story of the curious path that this taxpayer-funded invention took. As Alice said, things were getting curiouser and curiouser the closer we looked. Here is what we found.
The patent application started as an invention from a team of inventors at the Transportation Security Agency (TSA) at the Department of Homeland Security (DHS). The applicant and the assignee was a cabinet level department of the US federal government. By the time the patent was granted, the owner had changed to Apple, Inc. The inventors changed from five TSA employees to ten inventors, five from TSA and five who work on Apple Pay and Apple's mobile driver's license and identity credential efforts.
The patent application, serial number 17/180,509, was filed on February 19, 2021. The pre-grant application was published on October 14, 2021 (20210321263.) We picked it up as part of our weekly hunt for taxpayer-funded patents. At the time, it looked like this:
By the time the patent was granted, it looked like this:
The Government Interest Statement reads:
"The present invention was made by one or more employees of the United States Department of Homeland Security in the performance of official duties."
A change in assignee of a government assignee and the addition of inventors after the publication of the application is odd. Time to dig into the timeline and the documents in the Image File Wrapper in Public PAIR to see what happened.
The big events on the timeline are:
February 19, 2021 — The patent application 17/180,509 was filed.
October 14, 2021 — The pre-grant application was published as publication number 20210321263.
December 21, 2021 — The patent, 11,206,544, was granted.
What happened in between all these milestones? Here are the highlights.
April 2020 — The patent application started percolating around April 2020.
The patent application references two provisional patent applications: 63/009,243, "Checkpoint Identity Validation Using Mobile Identification Credential," filed on April 13, 2020; and US Provisional Application No. 63/052,275 entitled "Checkpoint Identity Validation Using Mobile Identification Credential," filed on July. 15, 2020.
The non-provisional application was filed on February 19, 2021, before the one-year deadline expired.
March 25, 2021 — The Department of Homeland Security filed for Track One accelerated examination.
April 28, 2021 — DHS received its first Notice of Allowance. The Patent Office acted promptly. Magic. DHS got its patent two months after the non-provisional application was filed.
August 6, 2021 — DHS applies to withdraw the application and for Continued Examination. DHS had paid the issue fee. Then they requested that the patent be withdrawn before the grant was published.
August 10, 2021 — The Assignee changed from DHS to Apple, Inc. was executed in the USPTO assignment database.
August 11, 2021 — The full ownership of the application went from DHS to Apple according to forms in the Image File Wrapper. The patent attorney also changed from in-house DHS patent attorneys to Randy Omid from Dentons in San Francisco. Mr. Omid represents companies in consumer electronics, multimedia distribution systems, payment networks, Internet-based technologies, and network architecture markets.
August 23, 2021 — The second Notice of Allowance was issued.
November 23, 2021 — Fees were due.
September 13, 2021 — The inventors changed. Five inventors from Apple were added.
September 16, 2021 — USPTO accepted the Change of Ownership Request filed by Apple's patent attorney.
November 18, 2021 — The Issue Fee was paid again.
December 21, 2021 — The patent was granted and published.
Who Are The Inventors?
The application had five inventors. The patent had ten inventors, five from TSA and five from Apple.
The DHS inventors on the application and the patent are:
Daniel A. Boyd (Arlington, Virginia) — DHS/TSA
Kelli L. Biegger (McLean, Virginia) — DHS/TSA
Chang Ellison (Arlington, Virginia) — DHS/TSA
Brandon P. Gutierrez (Burke, Virginia) — DHS/TSA
Jason Lim (Alexandria, Virginia) — DHS/TSA
Mr. Boyd is a Systems Engineer focusing on Identity Management at TSA. Ms. Biegger is a Program Analyst at TSA. Mr. Ellison is a Program Manager at TSA. Mr. Gutierrez worked for Sandia National Lab, where he was detailed to TSA where he was responsible for the direction and vision for TSA's identity management architectural concepts and framework. He is now the Digital Identity Product Lead at Equifax. Mr. Lim is a Branch Manager for Screening Technology Integration at TSA.
The Apple inventors who appeared on the patent are:
Ho Cheung Chung (Sunnyvale, California)
Irene M. Graff (Cupertino, California)
Martijn Theo Haring (Utrecht, Netherlands) Ahmer A. Khan (San Jose, California)
Franck Farian Rakotomalala (Dublin, California)
Ms, Graff is Senior Manager, PMO: Wallet, Commerce & Payments. She worked on developing the Identity Credential in Wallet, and the implementation of the Apple Mobile Driver License (mDL) announced in 2021. Mr. Haring is Senior Standards Engineer, Apple Pay. He joined in May 2019. Before going to Apple, he worked for UL Security Solutions. UL Security Solutions offers mDL verification services. Mr. Khan is a Senior Architect, Apple Pay at Apple. Mr, Rakotomalala is Software Engineer for Apple Pay who worked on Apple's mobile driver's license team.
We are assuming Ho Cheung Chung works for Apple.
What is Going On Here?
First, we have a group of federal employees filing patent applications for smartphone apps that cover a technology where the organization they work for is directly involved in writing and approving the global standards for verifying identity at checkpoints.
The patent starts as a federally-funded endeavor undertaken by government employees, and then it morphs into a patent owned by one of the country's most influential technology companies.
Google and Apple, the smartphone duopoly, are both working on modifying their phone operating systems to make identity apps like mobile driver's licenses and secure credentials with more secure and privacy protection.
According to a September 2021 article by Vox media DHS is establishing new standards for the technology that powers digital IDs. The TSA is already working with Apple to accept a version of an iPhone-based digital ID that can be used in airports."
DHS funded the work by the International Standards Organization (ISO) to develop the mobile driver's license (mDL) standard. The list of people who participated in this effort is confidential.
If DHS funded and participated in the official standards workgroup that developed the standard, did they disclose their patent applications?
There was also a notable lack of non-patent prior art in the application. Surely white papers were floating around. The ideas for using digital driver's licenses started at the state and local level as early as 2014.
The TSA inventors and DHS filed a series of interrelated identity verification and authorization patent applications on the use of digital IDs and verification for voting, electronic health records, more checkpoint technology, and using mobile identification credentials in merchant and personal transactions. While USPTO has already rejected some as not being novel, others put DHS in the path of innovative companies building their solutions in these sectors.
Mr. Lim, one of the DHS inventors on the DHS-Apple patent and a government official in that the TSA, noted that Chief Counsel's IP team had a proactive patent strategy to ensure that no vendors file patents that could negatively impact TSA's ability to choose the best solution for identity verification at the checkpoint. Hmmmmm.
Then there's the matter of the licensing revenue. Will DHS inventors be paid royalties when the TSA-approved app appears in the Apple App Store? Will the app be free? What are the government's (taxpayer's) rights to the invention? The government has certain rights to the invention phrase is notably missing from the government interest statements.
We go through thousands of patents and patent applications each month to find the taxpayer-funded ones. A change of this type is a first.
Is This A Reverse Moderna?
This one looks like the reverse of Moderna COVID-19 spike protein application issues between Moderna and NIH.
The Moderna-NIH spike protein application dispute involves NIH adding government inventors to the patent application. The Apple-DHS patent involves adding private sector inventors to the application.
These changes to an application and a granted patent are rare, especially among taxpayer-funded ones. There isn't much public information about how the chango-switcho on this patent's ownership and inventors happened. We intend to keep looking.
Patents By The Numbers
The Patent Office granted 4,826 new patents on Tuesday, December 21, 2021. One hundred nine (109) benefitted from taxpayer funding.
Here are the numbers.
One hundred seven (107) patents have Government Interest Statements.
Twenty-two (22) have an applicant or an assignee that is a government agency.
The 109 new patents have 124 department-level funding citations.
These patents are the work of 375 inventors.
The 365 American inventors come from 32 states and the District of Columbia.
The Big Three States:
California has 19 first-named inventors and 59 total inventors.
Massachusetts has nine first-named inventors and 47 total inventors.
Illinois has eight first-named inventors and 21 total inventors.
The ten foreign inventors come from eight (8) countries.
There are 59 patents (54%) where at least one assignee is a college or university, the HERD.
Federally Funded Research and Development Centers (FFRDCs) received eight (8) patents.
A federal department is an assignee on 14 patents.
This week there is one Bayh-Dole scofflaw, Pioneer Hi-Bred International, Inc., for a newly patented insecticidal protein.
Four patents have Y CPC symbols this week, indicating inventions useful in mitigating the impact of climate change—the Pioneer Hi-Bred International patent was the first. Two patents involve intentions focused on reducing greenhouse gas emissions in power generation. A fourth is for an invention useful in climate change mitigation in transportation.
Patent Count By Department
Patents By Technology Center
Patent Application —> Tech Center —> Art Unit —> Patent Examiner —> Patent
The Technology Center chart below shows where this week's patents were examined. This week there was one re-examination patent in the FedInvent taxpayer-funded patents mix.
The Health Complex
The table below shows the funding citations for patents where the recipient cites the Department of Health and Human Services (HHS), the institutes at the National Institutes of Health, and other subagencies that are part of HHS, the Health Complex.
Before We Go
There will be no FedInvent Patent Application newsletter for December 23, 2021. We'll add the links to the FedInvent Report to the newsletters next week.
We've started working on the first FedInvent year-end roundup. As of Tuesday, we have identified over 7,600 taxpayer-funded patents granted in 2021. There is one more week to go.
We're looking forward to reporting the final 2021 count and the trends we've uncovered.
Please explore the FedInvent Patent Report. It's an important addition to your newsletter subscription.
If you'd like to catch up on earlier FedInvent Reports, you can access the newsletters here on Substack. In addition, the reports are available on the FedInvent Links page.
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Next week, we'll see you with the latest on the federal innovation ecosphere.
The FedInvent Team
FedInvent is the home of data-driven journalism about taxpayer-funded innovation, where we tell the stories of inventors, investigators, and innovators. Wayfinder Digital's FedInvent Project follows the federal innovation ecosphere, taxpayer money, and the inventions it pays for.
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