before the patent trial and appeal board t. rowe … · 2020-03-13 · case no.: to be assigned...
TRANSCRIPT
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________________________
T. ROWE PRICE INVESTMENT SERVICES, INC. Petitioner
v.
SECURE AXCESS, LLC Patent Owner
____________________
Case No.: To Be Assigned
Patent No.: 7,631,191 For: System and Method for Authenticating a Web Page
____________________
PETITION FOR COVERED BUSINESS METHOD REVIEW OF U.S. PATENT NO. 7,631,191 UNDER SECTION 18 OF THE LEAHY-SMITH
AMERICA INVENTS ACT AND 37 C.F.R. § 42.300
Mail Stop Patent Board Patent Trial and Appeal Board U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450
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TABLE OF CONTENTS
Page
I. PRELIMINARY STATEMENT .................................................................... 1
II. 37 C.F.R. § 42.304(A): GROUNDS FOR STANDING ................................ 3
A. The ’191 Patent Is a Covered Business Method Patent. ...................... 3
B. 37 C.F.R. § 42.302(b): Petitioner Is Not Estopped. ............................. 4
III. 37 C.F.R. § 42.304(B): IDENTIFICATION OF CHALLENGE ................... 4
A. 37 C.F.R. § 42.304(b)(2): Specific Statutory Grounds on Which the Challenge is Based ......................................................................... 4
IV. OVERVIEW OF THE ’191 PATENT AND SUMMARY OF ITS PROSECUTION HISTORY .......................................................................... 5
A. The ’191 Patent Relates to Web Page Authentication in the Financial Services Industry. ................................................................. 5
B. Summary of the Prosecution History of the ’191 Patent ..................... 7
V. THE ’191 PATENT IS A COVERED BUSINESS METHOD PATENT. ........................................................................................................ 9
A. The Claims of the ’191 Patent Are Directed to Performing Data Processing Used in the Administration of a Financial Product or Service. ............................................................................................... 10
B. The ’191 Patent Is Not Directed to a “Technological Invention.” ..... 13
1. The ’191 Patent does not claim a novel, nonobvious technological feature. .............................................................. 13
2. The ’191 Patent does not solve a technical problem using a technical solution. ....................................................... 15
VI. CLAIM CONSTRUCTION ......................................................................... 16
A. “preferences file” ................................................................................ 17
B. “to locate a preferences file”/ “enables location of a preferences file” ..................................................................................................... 17
C. “authenticity key” ............................................................................... 19
D. “authenticity stamp” ........................................................................... 20
TABLE OF CONTENTS (continued)
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E. “insert an authenticity key”/“inserting an authenticity key” .............. 20
F. “received data”/ “returning . . . the formatted data”/“send formatted data”/“receiving, at a client computer, formatted data from a authentication host computer” ................................................ 22
G. “transforming”/“transforms” .............................................................. 24
VII. THE CHALLENGED CLAIMS ARE UNPATENTABLE ......................... 27
A. GROUND 1: The Challenged Claims Fail To Claim Patentable Subject Matter Under 35 U.S.C. § 101. ............................................. 27
1. Claims reciting abstract ideas implemented using general-purpose computer components are not patent-eligible. .................................................................................... 27
2. The Challenged Claims are patent-ineligible as they are directed to the computerized application of the fundamental economic practice of notarizing documents. .............................................................................. 30
a. Document notarization is a fundamental economic practice. ......................................................................... 30
b. The Challenged Claims directly track the traditional notarization process. ................................... 31
c. The ’191 Patent is directed to the same problem as traditional notarization. ................................................. 36
d. Electronic notarization is not new. ................................ 37
3. The Challenged Claims preempt the basic operation of electronic document notarization and therefore are patent-ineligible. ..................................................................... 38
a. The Challenged Claims recite only routine and conventional components and activities. ....................... 39
b. The Challenged Claims are drawn to an abstract idea under the “machine or transformation” test. ........ 43
TABLE OF CONTENTS (continued)
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c. Nothing recited in the Challenged Claims transforms the abstract idea into a patent-eligible invention. ....................................................................... 45
d. The Challenged Claims must be found unpatentable under Ultramercial. ................................. 48
B. GROUND 2: Claims 1 – 5, 16 And 32 Are Invalid Under 35 U.S.C. 112 if “Transforming” Means Something Different Than “Formatting.” ...................................................................................... 50
C. GROUND 3: Houser Anticipates Claims 1, 3, 5, 16 and 29 – 32. ....................................................................................................... 52
1. Formatted data having an authentication key ......................... 54
2. Returning formatted data to enable the authenticity key to be retrieved from the formatted data to locate a preferences file so that an authenticity stamp may be retrieved from the preferences file .......................................... 56
3. “received data”/ “returning . . . the formatted data”/“send formatted data”/“receiving, at a client computer, formatted data from a authentication host computer” ................................................................................ 59
D. Ground 4: Claims 2 and 4 Are Obvious Under 35 U.S.C. 103 Over Houser In View Of Yoshiura. ................................................... 71
1. The combination of Houser and Yoshiura renders Claim 2 obvious under 35 U.S.C. § 103. ................................ 71
2. The combination of Houser and Yoshiura renders Claim 4 obvious under 35 U.S.C. § 103. ................................ 72
VIII. THIS PETITION PRESENTS FUNDAMENTALLY DIFFERENT ISSUES FOR THE BOARD TO CONSIDERED. ...................................... 73
A. The Issues Raised in This Petition Under 35 U.S.C. § 101 (Ground 1) Are Fundamentally Different Than CBM2014-00100. ................................................................................................. 74
TABLE OF CONTENTS (continued)
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B. The Federal Circuit Has Reversed Ultramercial I. ............................ 75
C. The Board In CBM2014-00100 Was Not Presented With Any Evidence Regarding The Electronic Adaptation Of The Paper Document Notarization Process. ........................................................ 76
D. Petitioners’ Challenge Under 35 U.S.C. § 112 (Ground 2) Is New and Was Not Raised in the Previous PTAB Proceedings. ........ 77
E. Houser Was Not Considered in the Previous PTAB Proceedings. ....................................................................................... 77
IX. MANDATORY NOTICES UNDER 37 C.F.R. §§ 42.8(a)(1) ..................... 78
A. Real party-in-interest under 37 C.F.R. § 42.8(b)(1) ........................... 78
B. Related matters under 37 C.F.R. § 42.8(b)(2) .................................... 78
C. Lead and back-up counsel under 37 C.F.R. § 42.8(b)(3) ................... 79
D. Service information under 37 C.F.R. § 42.8(b)(4) ............................. 79
E. Supporting evidence under 37 C.F.R. § 42.104(b)(5) ........................ 79
X. CONCLUSION ............................................................................................. 80
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TABLE OF AUTHORITIES
Page(s)
Cases
In re Abele, 684 F.2d 902 (C.C.P.A. 1982) ............................................................................ 43
Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014) .................................................................................passim
Amdocs v. Openet Telecom, No. 1:10cv910, Mem. Op. & J. (E.D.Va. Oct. 24, 2014) ................................... 42
Ariad Pharms, Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) .......................................................................... 50
Bilski v. Kappos, 561 U.S. 593, 130 S. Ct. 3218 (2010)..........................................................passim
CRS Advanced Techs., Inc. v. Frontline Techs., Inc., CBM2012-00005 .................................................................................... 10, 11, 12
Cybersource v. Retail Decisions, 654 F.3d 1366 (Fed. Cir. 2011) .......................................................................... 44
Digitech Image Technologies v. Electronics for Imaging, Inc., et al., 2014 WL 3377201 (Fed. Cir., July 11, 2014) ............................................... 40, 41
In re Grams, 888 F.2d 835 (Fed. Cir. 1989) ............................................................................ 41
Lockwood v. American Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997) .......................................................................... 51
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) ...................................................................... 27, 28, 40, 42
PNC Bank et al. v. Secure Axcess, LLC, CBM2014-00100 .........................................................................................passim
TABLE OF AUTHORITIES (continued)
Page(s)
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Secure Axcess, LLC v. Bank of America Corp., et. al., No. 6:10-cv-00670 (LED) (E.D. Tex. Jul. 9, 2012), ECF No. 461 .................... 16
Ultramercial, Inc. v. Hulu, LLC, 107 USPQ2d 1193 (Fed. Cir. 2013) ....................................................... 48, 49, 75
Ultramercial, LLC. v., Hulu, LLC et al., 2010-1544 (Fed. Cir. 2014) .................................................................... 48, 49, 75
Statutes
35 U.S.C. 102(b) ................................................................................................... 3,52
35 U.S.C. 103 ................................................................................................. 71,72,73
35 U.S.C. 103(a) ........................................................................................................ 3
35 U.S.C. 112 ....................................................................................................... 2, 50
35 U.S.C. § 101 .................................................................................................passim
35 U.S.C. § 112 ........................................................................................ 4, 50, 52, 77
35 U.S.C. § 321(c) ..................................................................................................... 4
35 U.S.C. § 325(e)(1) ................................................................................................. 4
Regulations
37 C.F.R. 42.301(a) .................................................................................................... 9
37 C.F.R. §§ 42.8(a)(1) ............................................................................................ 78
37 C.F.R. § 42.8(b)(1) .............................................................................................. 78
37 C.F.R. § 42.8(b)(2) .............................................................................................. 78
37 C.F.R. § 42.8(b)(3) .............................................................................................. 79
37 C.F.R. § 42.8(b)(4) .............................................................................................. 79
TABLE OF AUTHORITIES (continued)
Page(s)
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37 C.F.R. § 42.104(b)(5) .......................................................................................... 79
37 C.F.R. § 42.300 ..................................................................................................... 1
37 C.F.R. § 42.302(b) ................................................................................................ 4
37 C.F.R. § 42.304(A) ............................................................................................... 3
37 C.F.R. § 42.304(B) ................................................................................................ 4
37 C.F.R. § 42.304(b)(2) ............................................................................................ 4
42 C.F.R. § 42.200(b) .............................................................................................. 16
77 Fed. Reg. 48,736 ................................................................................................. 13
77 Fed. Reg. 48,756 ................................................................................................. 13
77 Fed. Reg. 48,764 ................................................................................................. 13
Other Authorities
M.P.E.P. § 2163.02 ............................................................................................ 50, 51
1
Petitioner T. Rowe Price Investment Services, Inc., (“T. Rowe Price” or
“Petitioner”) respectfully requests Covered Business Method Review (“CBMR”)
in accordance with Section 18 of the Leahy-Smith America Invents Act (“AIA”)
and 37 C.F.R. § 42.300 of claims 1 – 5, 16 and 29 – 32 (the “Challenged Claims”)
of U.S. Patent No. 7,631,191 (“the ’191 Patent”) (Exhibit (Ex.) 1001).
I. PRELIMINARY STATEMENT
The ’191 Patent is a covered business-method patent reciting systems and
methods for authenticating web pages. However, those systems and methods are
tantamount to an electronic adaptation of the age-old practice of notarizing
documents. Authenticating a web-page via the systems and methods claimed in
the ’191 Patent is nothing more than notarizing an electronic document in the same
manner that physical documents have been notarized for centuries. There is
nothing patentable or novel about the mere transposition of a well-known notary
process to a computerized environment. In view of the Challenged Claims’
deficiencies, the following statutory grounds of invalidity are asserted:
Ground 1 of Challenge: The Challenged Claims of the ’191 Patent are
patent-ineligible because they are directed purely to the computerized application
of the fundamental economic practice of notarizing documents, and therefore are
directed to an abstract idea which, if left intact, would preempt the basic practice of
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notarizing electronic documents, such as webpages, regardless of field or industry.
Moreover, the Challenged Claims recite no meaningful structure beyond the
ambient of the notary process merely transposed into a different technological
environment. The Supreme Court has made clear that method claims that do no
more than simply instruct a practitioner to apply an abstract idea are not patentable,
and that system claims reciting no more than generic computer components to
implement the same abstract idea are similarly not patentable. Alice Corp. Pty.
Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014) (“Alice”); Bilski v. Kappos, 561
U.S. 593, 130 S. Ct. 3218 (2010). Accordingly, T. Rowe Price requests that the
Board declare the Challenged Claims invalid for failure to claim patent-eligible
subject matter under 35 U.S.C. § 101.
Ground 2 of Challenge: Claims 1-5, 16, and 32 are invalid for failing to
comport with the written description requirement. Independent claims 1 and 32
recite the operation of “transforming” received data to create “formatted data.”
However, there is no support – express or implied – for the recited transforming
step in the disclosure of the ’191 Patent. The recited “transforming” step is an
unsupported artifact of the ’191 Patent’s prosecution and, to the extent that the
term “transforming”/“transforms” is determined to have a materially different
meaning than “formatting,” claims 1 – 5, 16 and 32 would be invalid under 35
U.S.C. 112 by virtue of failing to satisfy the written description requirement.
3
Ground 3 of Challenge: Claims 1, 3, 5, 16 and 29 – 32 of the ’191 Patent are
anticipated by Houser (Ex. 1004) under 35 U.S.C. 102(b). Houser, like the claims
of the ’191 Patent, teaches the simple concept of inserting an “authenticity key”
(e.g., Houser’s “identifier”) into “received data” (e.g., Houser’s “electronic
document”), using the authenticity key to begin a process of verifying the
authenticity of the “formatted data,” and displaying an electronic document with an
“authenticity stamp” (Houser’s “electronic chop and/or “watermark”) in response
to the authenticity or integrity of the electronic document being verified.
Ground 4 of Challenge: Claims 2 and 4 of the ’191 Patent are obvious over
Houser (Ex. 1004) in view of Yoshiura (Ex. 1005) under 35 U.S.C. 103(a).
Yoshiura, like the ’191 Patent, teaches “check[ing] the validity” (i.e.,
authenticating) of a “Web page” by using a “digital signature,” and displaying the
web page (“formatted data”) only after it has been authenticated.
II. 37 C.F.R. § 42.304(A): GROUNDS FOR STANDING
A. The ’191 Patent Is a Covered Business Method Patent.
The Patent Trial and Appeal Board (“PTAB”) has already found that the
’191 Patent is a covered business method patent as defined under AIA § 18(d)(1)
and hence subject to covered business method patent review. See PNC Bank et al.
v. Secure Axcess, LLC, CBM2014-00100, Paper 10, (“CBM2014-00100 Decision”)
4
(Ex. 1003) at 18. Additional reasons for the ’191 Patent’s covered business
method review eligibility are set forth under Section V.
B. 37 C.F.R. § 42.302(b): Petitioner Is Not Estopped.
T. Rowe Price certifies that the ’191 Patent is available for CBMR and that
T. Rowe Price is not estopped from requesting CBMR of the ’191 Patent on the
identified grounds. T. Rowe Price certifies that: (1) T. Rowe Price does not own
the ’191 Patent; (2) T. Rowe Price has not filed a civil action challenging the
validity of any claim of the ’191 Patent; (3) the estoppel provisions of 35 U.S.C. §
325(e)(1) do not prohibit this CBMR; (4) this Petition is filed after the ’191 Patent
was granted; and (5) there are no pending petitions for post-grant review that
would satisfy 35 U.S.C. § 321(c).
III. 37 C.F.R. § 42.304(B): IDENTIFICATION OF CHALLENGE
A. 37 C.F.R. § 42.304(b)(2): Specific Statutory Grounds on Which the Challenge is Based
T. Rowe Price requests CBMR of the Challenged Claims (i.e., claims 1 – 5,
16 and 29 – 32) of the ’191 Patent pursuant to 35 U.S.C. § 101 as directed to a
patent-ineligible subject matter (Ground 1). T. Rowe Price further requests CBMR
of claims 1 – 5, 16 and 32 under 35 U.S.C. § 112 (pre-AIA), first paragraph, as
failing to satisfy the written description requirement thereof (Ground 2).
T. Rowe Price further requests cancellation of Claims 1, 3, 5, 16 and 29 –
32 of the ’191 Patent in view of U.S. Patent No. 5,606,609, filed September 19,
5
1994 and issuing on February 25, 1997 to Houser, et al. (“Houser”)(Ex.
1004)(Ground 3), as well as cancellation of claims 2 and 4 in view of the
combination of Houser and European Patent Publication Number EP 0 883 284
A2, published December 9, 1998 and issuing to Yoshiura, et al. (“Yoshiura”)(Ex.
1005)(Ground 4).
IV. OVERVIEW OF THE ’191 PATENT AND SUMMARY OF ITS PROSECUTION HISTORY
A. The ’191 Patent Relates to Web Page Authentication in the Financial Services Industry.
The ’191 Patent relates to authenticating a web page, such as
“www.bigbank.com,” in an “electronic commerce system” for “exchanging data or
transacting business” and facilitating “online commerce transactions” between a
customer/merchant and a bank. See ’191 Patent (Ex. 1001) at 1:16-18, 1:33, 8:21-
23, 11:1-2, 11:30-31, 11:60-67.
As recognized by the ’191 Patent itself, web pages often include icons,
logos, or other information, associated with their true owner, that can be easily
copied and used to defraud a customer. See id. at 1:22-28. The problem with those
images or indicators of ownership or origin is that “it is relatively easy for a
‘fraudster’ to register a URL that is like the one the user is expecting, but is not
quite the same,” and “[t]hus a user may retrieve an unwanted web page that
appears authentic.” Id. at 1:28-35. The ’191 Patent purports to address this
6
problem by displaying a web page, together with a so-called “authenticity stamp,”
indicating that the page has been validated or authenticated.
A web page that has not been authenticated may be displayed as shown in
Figure 1 of the ’191 Patent, reproduced below on the left. See also, id. at 2:54-60;
5:32-35. However, if the same web page is verified as authentic, it is displayed
together with an authenticity stamp 60 as shown in Figure 2, annotated and
reproduced below on the right. See also, id. at 2:58-62.
’191 Patent, Fig. 1 ’191 Patent, Fig. 2 (Annotated)
According to the ’191 Patent, a user can configure the “authenticity stamp”
to be “graphics only, text only or combination thereof,” or to be audio instead of
visual. Id. at 3:1-3; 7-8. In addition, a non-authenticated page may be stamped
(e.g., “PAGE NOT AUTHENTICATED”), while an authenticated page may not be
stamped. See id. at 3:8-12.
7
To authenticate a web page and display an authenticity stamp, the ’191
Patent proposes an arrangement (shown in Figures 4-5 and 8) in which a user (110,
Fig. 4) requests a web page from a web site using a web browser (112, Fig. 5). See
id. at 1:52-53. The web site’s web server (120, Fig. 4) receives the request (180,
Fig. 5), retrieves the web page, and forwards it to an authentication server (140,
Fig. 4). See id. at 1:53-55; 4:13-22; 4:56-8. The authentication server inserts a so-
called “authenticity key” into the web page (see id. at. at 4:13-2; 7:66-8:3; 608 and
610, Fig. 10), after which the page, including the authenticity key, is returned to
the user (182, Fig. 5). See id. at 1:55-57.
After the web page is returned to the user (110, Fig. 5), the authenticity key
is used in a process to verify the authenticity of the page. See id. at 1:57-60. If the
web page is verified as authentic (402, Fig. 8), an authenticity stamp is retrieved
from a so-called “preferences file” (see id. at 4:40-3; 6:47-50) and is displayed, as
shown above in Figure 2. See id. at 2:58-3:1; see also, id. at 404 of Fig. 8.
B. Summary of the Prosecution History of the ’191 Patent
The ’191 Patent issued from Application No. 11/423,340 (“the ’340
Application), which was filed on June 9, 2006 as a continuation of U.S. Patent
Application No. 09/656,074, filed on September 6, 2000 (now issued as U.S.
Patent No. 7,203,838). The ’340 Application was originally filed with 24 claims,
none of which recited the “preferences file” or “authenticity stamp” limitations
8
now appearing in the independent claims. Those limitations were added by new
claims filed in a Preliminary Amendment. See Preliminary Amendment, Apr. 11,
2007 (Ex. 1002). Specifically, in order to overcome the prior art, the applicant
amended each independent claim to recite “locat[ing] a preferences file, and . . .
retriev[ing] an authenticity stamp from the preferences file,” or a similar limitation,
and added new independent claim 40. See Amendment, Jan. 16, 2008 (Ex. 1002).
Thereafter, the Office rejected each of the pending system claims under 35
U.S.C. § 101 as being software-only claims that fail to otherwise fall into any of
the statutory classes of invention. See Office Action, July 16, 2008 (Ex. 1002).
That Section 101 rejection was overcome by revising the system claims to recite an
“authentication processor” as opposed to an “authentication server.” See
Amendment, Oct. 8, 2008 (Ex. 1002). While the Section 101 rejection of the
system claims was overcome by that slight re-wording, the method claims were
further rejected by the Office in view of the Federal Circuit’s In re Bilski decision,
and particularly the fact that the method claims failed to disclose a machine or data
transformation. See Office Action, Jan. 9, 2009 (Ex. 1002).
In response to Section 101 rejection of the method claims, the applicant
amended the independent method claims 1 and 40 to further recite “an
authentication host computer” and/or “a client computer,” as well as to change the
recited “formatting . . . received data” to “transforming . . . received data.” See
9
Amendment, Apr. 1, 2009 (Ex. 1002). The applicant provided no indication as to
where the support for these amendments could be found.
As a result of the applicant (i) revising the system claims to include an
“authentication processor” instead of an “authentication server,” and (ii) revising
the method claims to recite “transforming” instead of “formatting,” and to further
generically include “an authentication host computer” and/or “a client computer,”
the Office withdrew the Section 101 rejections and allowed the claims. See Notice
of Allowance (Ex. 1002). The ’191 Patent then issued on December 8, 2009.
V. THE ’191 PATENT IS A COVERED BUSINESS METHOD PATENT .
The USPTO Rules and the AIA define a two-part test to determine whether a
patent is eligible for CBMR: (1) the patent must claim a method or corresponding
apparatus for performing data processing or other operations used in the practice,
administration, or management of a “financial product or service;” and (2) the
claimed invention must not be a “technological invention[].”37 C.F.R. 42.301(a);
AIA § 18(d)(1). The ’191 Patent satisfies both parts of the test.
In fact, the PTAB has already held that the ’191 Patent is a covered business
method patent under AIA § 18(d)(1) and hence subject to covered business method
patent review. See PNC Bank et al. v. Secure Axcess, LLC, CBM2014-00100,
Paper 10, (“CBM2014-00100 Decision”) (Ex. 1003) at 18. More specifically, the
PTAB first found that the ’191 Patent’s claims are at least “incidental to a financial
10
activity” because they are directed to “performing data processing or other
operations used in the practice, administration, or management of a financial
product or service.” Id. at 14 (citing 37 C.F.R. § 42.301(a)). Second, the PTAB
found that “technological features of the claimed steps are directed [solely] to
using known technologies.” Id. at 17. These reasons apply with equal force to this
Petition. Solely for the sake of completeness, T. Rowe Price expounds below on
the Board’s prior finding.
A. The Claims of the ’191 Patent Are Directed to Performing Data Processing Used in the Administration of a Financial Product or Service.
The Board has held that the statutory CBMR category of “financial
product[s] or service[s]” extends to “activities that are financial in nature,
incidental to a financial activity or complementary to a financial activity.” CRS
Advanced Techs., Inc. v. Frontline Techs., Inc., CBM2012-00005, Paper 17 at 7
(Jan. 23, 2013) (quoting 77 Fed. Reg. 48,735 (PTAB Aug. 14, 2012)) (“CRS”).
Indeed, patents are eligible for CBMR if they cover “any ancillary activities related
to a financial product or service, including . . . marketing, customer interfaces, Web
site management and functionality, transmission or management of data,
servicing, underwriting, customer communications, and back office operations—
e.g., payment processing, stock clearing.” CONG. REC. S1364–65 (daily ed. Mar.
8, 2011) (statement of Sen. Schumer) (emphasis added). The PTAB previously
11
recognized that “[n]othing in the statute, its legislative history, or the rules requires
that a covered business method patent include claim elements that map directly to
financial products or services.” CRS, CBM2012-00005, Paper 17 at 8.
The ’191 Patent relates to authenticating web pages in an “electronic
commerce system” for “exchanging data or transacting business” and facilitating
“online commerce transactions” between a customer/merchant and a bank. See
’191 Patent (Ex. 1001) at 1:16-18, 1:33, 8:21-23, 11:1-2, 11:30-31, 11:60-67.
According to the patent, the customer/merchant’s computer and the bank’s
computer are interconnected via “a payment network” that accommodates
“transactions for credit cards, debit cards, and other types of financial/banking
cards.” Id. at 11:52-56. “Examples of the payment network include the American
Express®, VisaNet® and the Veriphone® network.” Id. at 11:58-60. Moreover,
“the electronic commerce system is implemented at the customer and issuing bank
. . . as computer software modules loaded onto the customer computer and the
banking computing center.” Id. at 11:60-65.
The need for financial institutions to provide a way to authenticate their web
pages stems from the notion that “it is relatively easy for a “fraudster” to register a
URL that is like the one the user is expecting, but is not quite the same,” and
“[t]hus a user may retrieve an unwanted web page that appears authentic.” Id. at
1:28-35. The ’191 Patent provides one and only one example of a web address
12
which is susceptible to this tactic of using a URL which is similar, but not the
same, as the web page a user is expecting. That example is “www.bigbank.com.”
Id. at 1:31-33. Thus, it is clear that:
“The written description of the ’191 patent discloses a
need by financial institutions to ensure customers are
confident that the financial institution’s web page is
authentic (Ex. 1001, 1:28-33); alternative embodiments
of the invention are disclosed as being used by financial
institutions (id. at 8:21-23) and used in commerce,
including (i) transacting business over a network, such as
the Internet (id. at 10:65-11:3); and (ii) selling of goods,
services, or information over a network (id. at 17-21).”
CBM2014-00100 Decision (Ex. 1003) at 14.
It is further telling that Secure Axcess has thus far accused approximately 50
financial services companies of infringing the ’191 Patent. While this factor is not
dispositive by itself, the PTAB has found that it weighs “toward the conclusion
that the ’191 patent claims a method or apparatus that at least is incidental to a
financial activity.” Id. at 15.
Secure Axcess has also taken the position that, in connection with the
“online investment services” offered by T. Rowe Price, the defendants “make and
use a system and method for authenticating a web page that infringe at least claim
1 of the ’191 Patent.” See Compl. ¶ 14 (Ex. 1006). Secure Axcess cannot now
deny that the ’191 Patent relates to a covered business method.
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B. The ’191 Patent Is Not Directed to a “Technological Invention.”
The AIA excludes “patents for technological inventions” from the definition
of CBM patents. AIA § 18(d)(1). However, to institute a CBMR, a patent need
only have one claim directed to a covered business method that is not a
technological invention, even if the patent includes additional claims. 77 Fed. Reg.
48,736; see also CBM2012-00001, Paper 36 at 26. Because at least one claim of
the ’191 Patent fails to recite a novel and nonobvious technological feature and
fails to recite a technical solution to a technical problem, the patent is not for a
technological invention.
1. The ’191 Patent does not claim a novel, nonobvious technological feature.
“Mere recitation of known technologies, such as computer hardware,
communication or computer networks, software, memory, computer-readable
storage medium, scanners, display devices or databases, or specialized machines,
such as an ATM or point of sale device,” or “[r]eciting the use of known prior art
technology to accomplish a process or method, even if that process or method is
novel and nonobvious” will “not typically render a patent a technological
invention.” See, e.g., 77 Fed. Reg. 48,756, 48,764; see also CBM2012-00002,
Paper 10 at 7-8 (P.T.A.B. Jan. 25, 2013).
In this case, the ’191 Patent itself indicates that the components of the
computer system used in the claimed authentication process are known
14
technologies. As the Board concluded in CBM2014-00100, the ’191 Patent
discloses known computer systems and devices running known operating systems.
See ’191 Patent (Ex. 1001) at 3:30-34, 10:30-35, 11:7-12. The ’191 Patent also
discloses the use of known user input devices (see id. at 11:3-6), and known
networks and networking and communication protocols (see id. at 3:38-44, 10:67-
11:3, 11:12-17). The ’191 Patent specification “further discloses that the system is
programmed using known programming and scripting languages, and known data
structures (id. at 10:35-40), and discloses that the system uses “conventional
techniques for data transmission, signaling, data processing, network control, and
the like” (id. at 10:41-44).” CBM2014-00100 Decision (Ex.1003) at 17. Even
when it comes to the claimed “authentication stamp,” which is described as having
“an unlimited number of variations,” the ’191 Patent never teaches or suggests that
there is any particular novel or nonobvious technology used to implement the
stamp. See ’191 Patent (Ex. 1001) at 2:67-4. Rather, the ’191 Patent discloses that
the “authentication stamp” is encrypted and decrypted by using known
cryptography techniques.
Because at least one claim of the ’191 Patent fails to recite a novel and
nonobvious technological feature, the patent is not for a technological invention.
“Reciting the [mere] use of known prior art technology to accomplish a process or
15
method . . . does not render the claimed subject matter a technological invention.”
CBM2014-00100 Decision (Ex.1003) at 18 (citing 77 Fed. Reg. at 48,764).
2. The ’191 Patent does not solve a technical problem using a technical solution.
The ’191 Patent fails to solve a technical problem using a technical solution.
The Background section of the ’191 Patent identifies the problem as one of users
retrieving a webpage such as “www.bigbank.com” that is in fact not authentic. See
’191 Patent (Ex. 1001) at 1:26-37. The ’191 Patent purports that “a need exists for
a system and method that allow a page to be authenticated so that a user feels
secure in the authenticity of pages displayed from Internet sites.” Id. at 1:45-48.
However, this was not a “technical problem,” as it was already known in the art
how to authenticate electronic documents. See infra at §§ VII.C – VII.D.
Moreover, the ’191 Patent claims a scheme for providing users with a visual
indication that a webpage is likely authentic. In essence, and as explained in detail
below in Section VII.A, the ’191 Patent is the computerized equivalent of the age-
old process for notarizing paper documents. The ’191 Patent does not claim
special hardware or software for authenticating a web page, nor does it claim
specialized technology, such as encryption algorithms.
Because at least one claim of the ’191 Patent further fails to recite a
technical solution to a technical problem, the patent is not for a technological
invention and therefore is eligible for CBMR.
16
VI. CLAIM CONSTRUCTION
A claim subject to CBMR receives the “broadest reasonable construction in
light of the specification of the patent in which it appears.” 42 C.F.R. § 42.200(b).
Except as otherwise identified below, T. Rowe Price submits that, for the purposes
of this CBMR only, the claim terms should be given their broadest reasonable
ordinary and customary meaning that the term would have to a person of ordinary
skill in the art in light of the specification of the ’191 Patent. A person of ordinary
skill in the field of cryptographic engineering in or around 20001 would have a
Bachelor’s Degree or equivalent, in Electrical Engineering or Computer Science,
or two years of experience in cryptographic software development or the
equivalent work experience. See Declaration of Bruce Schneier (Ex. 1008)
(“Schneier Decl.”) at ¶¶ 35-36.
Judge Davis of the Eastern District of Texas construed several claim terms
in a prior litigation involving the ’191 Patent. Mem. Op. and Order, Secure Axcess,
LLC v. Bank of America Corp., et. al., No. 6:10-cv-00670 (LED) (E.D. Tex. Jul. 9,
2012), ECF No. 461 (“Markman Order”) (Ex. 1007). The PTAB also had occasion
1 This Petition uses the understanding as to the relevant period from the
Declaration of Bruce Schneier (Ex. 1008) at ¶ 35.
17
to construe various terms of the ’191 Patent in CBM2014-00100. See CBM2014-
00100 Decision (Ex. 1003) at 6-12.
A. “preferences file”
The claim term “preference file” should be construed as “a file containing
one or more authenticity stamps.” This construction is consistent with the intrinsic
record and the construction adopted by the Judge Davis in the district court action.
Independent claims 1, 29, 31, and 32 of the ’191 Patent require an
authenticity stamp to be retrieved from a “preferences file.” See ’191 Patent (Ex.
1001) at 12:15-18, 12:67, 14:8-10, 14:21-22, 14:30-31. The specification explains
that the “plug-in 114 reads the preferences file to determine the authenticity stamp
and how it is to be displayed.” Id. The broadest reasonable construction of the term
would therefore include “a file containing one or more authenticity stamps.” See
Schneier Decl. (Ex. 1008) at ¶¶ 55-58. At the request of Secure Axcess, Judge
Davis adopted this construction, confirming that it is within the broadest
reasonable construction. See Markman Order (Ex. 1007) at 9-10.
B. “to locate a preferences file”/ “enables location of a preferences file”
The claim terms “to locate a preferences file”/“enables location of a
preferences file” should be construed as “enabling, by an authenticity key as a
precondition, a process by which a preferences file is located.”
18
Independent claims 1, 31, and 32 of the ’191 Patent each recite “to locate a
preferences file,” while independent claim 29 recites “enables location of a
preferences file.” See ’191 Patent (Ex. 1001) at 12:15-16, 14:8, 14:21, 14:30. The
specification does not disclose that information from the authenticity key is used to
locate a preferences file. See Schneier Decl. (Ex. 1008) at ¶¶ 19, 22 and 24.
Further, Judge Davis agreed in his claim construction opinion that the specification
of the ’191 Patent does not support using an authenticity key to locate a
preferences file. See Markman Order (Ex. 1007) at 18. Similarly, the Board in
CBM2014-00100 also found that there is no support for a construction that the
authenticity key itself locates the preferences file or is somehow used to locate the
preferences file. CBM2014-00100 Decision (Ex.1003) at 11. Instead, the
specification discloses that “the plug-in 114 must get the preferences key to
determine the location of the preferences file.” ’191 Patent (Ex. 1001) at 4:38-40
(emphasis added). The specification describes that “upon verification of the
signature” (i.e., an authenticity key), a process that locates a preferences file
begins. Id. at 4:22-40. See Schneier Decl. (Ex. 1008) at ¶¶ 19 and 61.
Accordingly, the broadest reasonable interpretation of the claim terms “to
locate a preferences file”/“enables location of a preferences file” is “enabling, by
an authenticity key as a precondition, a process by which a preferences file is
located.” See id. at ¶¶ 59-61.
19
C. “authenticity key”
Each independent claim and dependent claims 3 and 4 of the ’191 Patent
recite an “authenticity key.” See, e.g., ’191 Patent (Ex. 1001) at 12:11, 12:14,
12:65, 14:7-8, 14:17-18, 14:20, 14:27-29. The term “authenticity key” should be
construed to mean “information that may be used to support authenticating the
formatted data.” See Schneier Decl. (Ex. 1008) at ¶¶ 44-46.
The specification of the ’191 Patent supports the above construction. The
specification discloses that an authenticity key includes “identifying information,”
such as “one or more hidden signature objects,” one of which “is a value that is the
encoding of the following fields: web page hash, action, date/time, key identifier
and digital signature.” ’191 Patent (Ex. 1001) at 8:36-43. The specification also
discloses that an authenticity key can be a digital signature. See, e.g., id. at 4:14-
16; see also id. at FIG. 11 (showing an exemplary authenticity key, which is a
digital signature); See Schneier Decl. (Ex. 1008) at ¶ 45.
T. Rowe Price’s proposed construction is consistent with the usage of
“authenticity key,” “authentication,” and “authenticity” in the specification of the
’191 Patent. See, e.g., ’191 Patent (Ex. 1001) at 4:22-24. Accordingly, the
broadest reasonable interpretation of “authenticity key” is “information that may
be used to support authenticating the formatted data.” See Schneier Decl. (Ex.
1008) at ¶¶ 44-46.
20
D. “authenticity stamp”
Each independent claim of the ’191 Patent and dependent claim 5 recites an
“authenticity stamp.” See ’191 Patent (Ex. 1001) at 12:17-18, 12:29-34, 12:66,
14:9, 14:21-22, 14:31. Judge Davis in the district court litigation construed the
term “authenticity stamp” to mean “a visual and/or audio indication that the
information (e.g., a web page) being presented has been authenticated and is from
a valid source.” See Markman Order (Ex. 1007) at 13. However, this construction
is not the broadest reasonable construction because it reads limitations from the
specification into the claims. Specifically, the claims do not recite a determination
that a source is “valid.”
In light of the specification of the ’191 Patent and consistent with the
meaning of “authenticity,” as explained above with respect to the “authenticity
key,” the term “authenticity stamp” should be construed to mean “a visual and/or
audio indication that the information (e.g., a web page) being presented has been
authenticated.” See Schneier Decl. (Ex. 1008) at ¶¶ 62-65.
E. “insert an authenticity key”/“inserting an authenti city key”
Each of independent claims 1, 31, and 32 recites “inserting an authenticity
key to create formatted data.” The broadest reasonable construction of “inserting”
includes inserting by putting among something, and therefore encompasses
attaching an authentication key to an electronic document or webpage.
21
The ’191 Patent’s specification offers little insight by describing an
authenticity key as being inserted into a web page, without further elaboration. In
addition, the specification only offers that “[t]he logic of FIG. 10 then moves to
block 610 where the authenticity key is inserted into the web page.” ’191 Patent
(Ex. 1001) at 8:1-3; see also id. at 1:55-57, Fig. 10 (block 610). Patent Owner may
argue that “inserting” should be construed as “to put into.” The PTAB has,
however, already rejected the Patent Owner’s contention that “inserting” is limited
to being put into the webpage. CBM2014-00100 Decision (Ex. 1003) at 8-9.
Rather, the Board in CBM2014-00100 held that the claim term “inserting”
encompasses “to put between or among” as well as “attaching” an authentication
key to an electronic document or webpage. Id. The Board specifically noted that
the ’191 Patent does not set forth a special definition for “insert” or “inserting,”
and instead looked to the ordinary meaning of the term “insert” as being “to put or
set into, between, or among.” Id. at 8.
Moreover, the “inserting” step cannot be limited to the embodiment of
“inserting into a webpage” as disclosed in the specification. In contrast, the claim
language is broader and extends to other embodiments, including formatted data.
Thus, the Board in CBM2014-00100 was correct in interpreting “insert” as
consistent with its ordinary meaning, which encompasses “being put into.” See id.
Therefore, consistent with the decision in CBM2014-00100, this Board should
22
similarly find that the broadest reasonable construction of “inserting an
authenticity key” includes inserting by putting between or among data, and
therefore encompasses attaching an authentication key to an electronic document
or webpage. See Schneier Decl. (Ex. 1008) at ¶¶ 47-51.
F. “received data”/ “returning . . . the formatted data”/“send formatted data”/“receiving, at a client computer, formatted data from a authentication host computer”
Independent claim 1 recites “transforming, at an authentication host
computer, received data by inserting an authenticity key to create formatted data.”
(emphasis added). Consistent with the Board’s prior determination and the
broadest reasonable interpretation, the claim term “received data” should be
construed as “receiving data sent from a component in or associated with the
authentication host computer.” CBM2014-00100 Decision (Ex. 1003) at 10.
The Patent Owner will likely attempt to re-argue that “received data” is
limited to data received by the authentication host computer and sent from
elsewhere – presumably a device other than the authentication host computer. Id.
at 10 (citing Patent Owner’s Prelim. Resp. at 39). This argument was expressly
rejected by the Board in CBM2014-00100, and rightly so. Id. The Board
explained that claim 1 does not limit or define from where the received data
originates, and therefore there is no reason, other than to avoid the prior art, to
23
limit the “received data” in claim 1 to data sent from a device other than from
some component on or otherwise associated with the authentication host computer.
The specification of the ’191 Patent similarly does not suggest any such
requirement of remotely-located computers or systems. In fact, the ’191 Patent
expressly teaches in the context of different hardware functionalities that the “logic
of the authentication server 140 can be combined with the logic of the web server
120.” See ’191 Patent (Ex. 1001) at 4:56-58; see also id. at 8:17-18 (stating that
“[i]n alternative embodiments, there is no authentication server.”).
Additionally, independent claim 29 recites “send formatted data,” while
independent claim 31 recites “received data” and “return the formatted data.”
Finally, claim 32 recites, in pertinent part, “receiving, at a client computer,
formatted data from an authentication host computer.” As with the “received data”
of claim 1, the broadest reasonable construction of these terms should similarly not
be limited to data transmitted between computers or systems that are remotely
located from one another, as the claims impose no such limitation and the
specification of the ’191 Patent does not otherwise suggest that any such limitation
is required. See Schneier Decl. (Ex. 1008) at ¶ 54.
Thus, the broadest reasonable construction of “received data,” as well as its
counterpart limitation in each of claims 29, 31 and 32, encompasses receiving data
sent from a component in or associated with the authentication host computer. See
24
CBM2014-00100 Decision (Ex. 1003) at 9-10; see also Schneier Decl. (Ex. 1008)
at ¶¶ 52-54.
G. “transforming”/“transforms”
Independent claim 1 recites “transforming, at an authentication host
computer, received data,” while independent claim 32 recites that the
“authentication host computer . . . transforms the received data . . . .” For the
reasons set forth below, the broadest reasonable construction of “transforming”/
“transforms,” when read in light of the specification is “formatting”/“formats.” See
Schneier Decl. (Ex. 1008) at ¶¶ 38-43.
As noted above, the method claims of the ’191 Patent were rejected by the
Office under 35 U.S.C. § 101 in view of the Federal Circuit’s In re Bilski decision
and the fact that those claims failed to disclose a machine or data transformation.
See Office Action, Jan. 9, 2009 (Ex. 1002). In response to that Section 101
rejection, the applicant amended independent method claims 1 and 40 (now
independent claims 1 and 32) to further recite “an authentication host computer”
and/or “a client computer,” as well as to change the recited “formatting . . .
received data” to “transforming . . . received data.” See Amendment, Apr. 1, 2009
(Ex. 1002). Along with this amendment, the Applicant argued that “these
rejections are now moot. Applicants amend claims 1 and 40 to clearly recite
25
computing hardware ("host computer") that is used to transform data.” Id. at 7.
The particular manner in which the claims were amended are set forth below
. . .
Id. at 2 and 6 (emphasis added).
The problem with the manner in which the applicant overcame the Office’s
Section 101 rejection is that it disregards another very important requirement—that
no new matter be introduced after an application is filed. In this case, the original
disclosure of the ’191 Patent fails to consider, let alone disclose, any such
“transforming” operation. In fact, the term “transform” does not appear even once
in the ’191 Patent’s original disclosure. Rather, the language of the amendment
merely parrots back the Bilski standard, and bears no relation to the purported
26
invention and original disclosure of the ’191 Patent. The only supportable
operation is the originally-recited “formatting” operation. See Schneier Decl. (Ex.
1008) at ¶¶ 40-42. Indeed, the original claims of the parent application to the ’191
Patent recited “formatting the retrieved data to create formatted data, wherein the
formatted data includes an authenticity key . . . .” See Claim 1 of Original
Specification, filed June 9, 2006 (Ex. 1002).
One of ordinary skill in the art at the time, when reading the specification,
would understand that the act of inserting an “authentication key” into “received
data” to form “formatted data,” as recited in claim 1, is at best what is described in
the ’191 Patent as being the originally-claimed “formatting” operation. See
Schneier Decl. (Ex. 1008) at ¶ 41. While there is little support in the ’191 Patent
for even that construction, at one point the ’191 Patent does indicate that the “logic
of retrieving and formatting the requested page is described below with reference
to FIGS. 9 and 10.” ’191 Patent (Ex. 1001) at 5:4-6 (emphasis added). Since FIG.
10 includes the operation of inserting an authenticity code into the page at block
610, the only possible construction that would be consistent with this disclosure, as
well as the language of the original claims, is that the term “transforming” actually
means “formatting,” as that is the only construction which finds any support in the
original disclosure of the ’191 Patent. See Schneier Decl. (Ex. 1008) at ¶¶ 38-43.
27
T. Rowe Price’s proposed construction of “transforming” is also consistent
with the remainder of the claims in the ’191 Patent. In particular, the claims recite
that the result of the “transforming” operation is to create “formatted data,” not
“transformed data.” Moreover, independent claims 29 and 31 do not recite any
corresponding “transforming” operation or feature, but instead only recite “an
authentication processor configured to send formatted data . . .” (claim 29), or
“instructions to format received data . . .” (claim 31) (emphasis added). The
absence of any indication, much less support, in the specification of the ’191 Patent
illustrates that the applicant was not in possession of a “transforming” concept at
the time of the application.
If any construction can be given to the “transforming” step, this Board
should construe the term to mean “formatting.”
VII. THE CHALLENGED CLAIMS ARE UNPATENTABLE
A. GROUND 1: The Challenged Claims Fail To Claim Patentable Subject Matter Under 35 U.S.C. § 101.
1. Claims reciting abstract ideas implemented using general-purpose computer components are not patent-eligible.
To be patent-eligible, a claim must recite an application of the idea “to a new
and useful end.” Alice at 2354. In Alice, the Supreme Court applied the two-step
framework for determining patent-eligibility, previously articulated in Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012):
28
First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts. If so,
we then ask, “what else is there in the claims before us?”
To answer that question, we consider the elements of
each claim both individually and as an ordered
combination to determine whether the additional
elements transform the nature of the claim into a patent-
eligible application. We have described step two of this
analysis as a search for an inventive concept—i.e., an
element or combination of elements that is sufficient to
ensure that the patent in practice amounts to significantly
more than a patent upon the ineligible concept itself.
Alice at 2355.2
With respect to the first step of the Alice/Mayo framework, in evaluating
whether a claim is directed to one of those patent-ineligible concepts—law of
nature, natural phenomena, or abstract idea—the Court “described the concern that
drives this exclusionary principle as one of pre-emption.” Id. at 2354 (citing
Bilski). The Court reasoned that monopolization of the “basic tools of scientific
and technological work” would “‘tend to impede innovation more than it would
tend to promote it,’ thereby thwarting the primary object of the patent laws.” Id.
(citing Mayo).” While the Court did not endorse a specific approach for evaluating
2 Referred to herein as the “Alice/Mayo framework.”
29
whether a claimed invention implicates the pre-emption concern that undergirds
the Court’s §101 jurisprudence, it compared the claims at issue in Alice to those it
had previously evaluated to find that it “follows from our prior cases, and Bilski in
particular, that the claims at issue here are directed to an abstract idea.” Id. at 2356.
For the second step of the Alice/Mayo framework, the Court explained that,
to survive a patentability challenge, “a claim that recites an abstract idea must
include ‘additional features’ to ensure ‘that the claim is more than a drafting effort
designed to monopolize the abstract idea.’” Id. at 2357. Instead, the additional
features must “transform that abstract idea into a patent eligible invention.” Id. at
2350. This inquiry has been described as a “search for an ‘inventive concept’”
found in the additional elements. Id. at 2355. In contrast, “[s]imply appending
conventional steps, specified at a high level of generality is not ‘enough’ to supply
an ‘inventive concept.’” Id. at 2357. In particular, the second step cannot be
satisfied by reciting the use of generic computers to perform conventional steps.
Indeed, “[g]iven the ubiquity of computers . . . wholly generic computer
implementation is not generally the sort of ‘additional feature’ that provides any
‘practical assurance that the process is more than a drafting effort designed to
monopolize the abstract idea itself.’” Id. at 2358.
The Supreme Court also found that the system claims should rise and fall
with the method claims. “[T]he system claims are no different from the method
30
claims in substance” if none of the hardware components recited by the system
claims “offers a meaningful limitation beyond generally linking the use of the
method to a particular technological environment, that is, implementation via
computers.” Id. at 2360.
2. The Challenged Claims are patent-ineligible as they are directed to the computerized application of the fundamental economic practice of notarizing documents.
The Challenged Claims of the ’191 Patent are patent-ineligible in view of
the fact that they are directed purely to the computerized application of the
fundamental economic practice of notarizing documents, and therefore are directed
to an abstract idea.
a. Document notarization is a fundamental economic practice.
Petitioner begins the analysis of the Challenged Claims under 35 U.S.C. §
101 with the understanding that the process of notarizing documents is itself a
“fundamental economic practice” and a “building block of the modern economy.”
See Alice at 2356 (finding that “intermediate settlement” and a “third-party
intermediary” are abstract ideas because they respectively represent a
“fundamental economic practice” and a “building block of the modern economy.”).
Traditionally, the notarization process has been used to verify or authenticate paper
documents. See Closen, Michael et al., Notary Law & Practice: Cases & Materials
(1997) (“Closen”) (Ex. 1010) at 8 (labeled as page 10 in the reference); see also
31
Rothman, Raymond C., Notary Public: Practices & Glossary (1978) (“Rothman”)
(Ex. 1012) at 4 (labeled as page 11 in the reference) (stating that “[a] document is
notarized so that the parties to an agreement can assure each other that this
particular document (and no other) is the authentic document . . .”).
It has been estimated that, on a daily basis, transactions affecting hundreds
of millions of dollars and important personal rights are affected by the notary
process. See Closen (Ex. 1010) at 3 (page unlabeled in the reference). “The role of
the notary public has been, and continues to be, absolutely vital to the orderly
conduct of domestic and international commerce for the United States and many
other countries of the world.” Id. at 5 (unlabeled page 1 in the reference) (emphasis
added). With an estimated hundreds of millions of documents being notarized in
this country each year, the notarization process is the very definition of a
“fundamental economic practice” and “building block of the modern economy.”
See id. at 6 (labeled as page 2 in the reference).
b. The Challenged Claims directly track the traditional notarization process.
The Challenged Claims directly track the basic process of having a
document notarized, albeit in an electronic form. In particular, Claim 1, as a
whole, relates to a computer-implemented method of “formatting” data
(“transforming” means “formatting” per § VI.G. above) in a particular manner;
namely, by “attaching” (“inserting” encompasses “attaching” per § VI.E. above) an
32
authenticity key to create formatted data, enabling a particular type of computer
file to be located and from which an authenticity stamp is retrieved.
As noted above, the act of notarizing a document effectively verifies or
authenticates the executed document. See Closen (Ex. 1010) at 8 (labeled as page
10 in the reference); see also id. at 14 (unlabeled page 39 in the reference); see also
Rothman (Ex. 1012) at 4 (labeled as page 11 in the reference). Documents which
are to be notarized have a so-called “certificate of notarization” or
“acknowledgment” added near or at the end of the document. See Closen (Ex.
1010) at 20-25 (labeled as pages 115-120 in the reference). An example of
“certificate of notarization” that can be added to a document is shown below:
Such a “certificate of notarization,” along with the necessarily included
information, e.g., signatory and notary information, functions in the same way as
the recited “authenticity key” of the Challenged Claims. In particular, inserting or
33
attaching the “certificate of notarization,” along with the necessary information,
necessarily “formats” the original document into a document that is ready for
authentication, in the same manner that inserting an authenticity key creates
“formatted data.” See e.g., ’191 Patent, claim 1; see also Closen (Ex. 1010) at 23
(labeled as page 118 in the reference) (stating that “[m]ost documents requiring
notarization conclude with a notarial form that is part of the document itself”).
Moreover, when a “certificate of notarization” is included in a document, it
signifies that the document should be notarized/authenticated (see Rothman (Ex.
1012) at 6 (labeled as page 29 in the reference)), just as the Patent Owner has
argued the purpose of the authenticity key is to indicate the page should be
authenticated. See CBM2014-00100 Prelim. Response (Ex. 1009) at 11 (arguing
that “the presence of an authenticity key in a page indicates that the page should be
authenticated”).
Like the web server 120 in the ’191 Patent, the notary verifies the identity of
a source or signator of a document by requiring that the signator present some form
of identification. See Closen (Ex. 1010) at 16 (labeled as page 110 in the
reference); see also id. at 8-9 (labeled as pages 10-11 in the reference). Only after
the notary is able to verify the identity of the signator will the notary retrieve and
apply a notary seal to the document using a notary stamping tool, such as an inked
34
stamp or vice-like metal embosser. See id.; see also id. at 17-18 (labeled as pages
111-112 in the reference). Samples of “notary seals” are shown below:
A notary seal is analogous to the recited “authenticity stamp” since it too is a
visual indication that the information (e.g., signed document) being presented has
been authenticated. “A notary’s signature and official seal can validate otherwise
lifeless papers or give instant credibility to otherwise suspect documents.” Id. at
14 (unlabeled page 39 in the reference) (emphasis added); see also id. at 17
(labeled as page 111 in the reference) (stating that “[when] affixed correctly, the
traditional seal becomes an effective fraud deterrent that can frustrate even high-
tech forgery techniques.”) (emphasis added).
While the notary seal may not be contained in a computer file per se, the
recitation of the “preferences file” in the claims offers no meaningful limitation
beyond generally linking the method to its particular technological environment
(e.g., generic computer-implemented method), which is insufficient under the
35
Alice/Mayo framework to transform claims which are otherwise patent-ineligible
into claims which are patent-eligible.
Nonetheless, it should be noted that the notary’s stamp actually contains the
equivalent of the claimed “preferences file.” The ’191 Patent expressly discloses
that the preferences file is used to store information for the specific and unique
configuration of the authenticity stamp used to indicate authenticity of the
electronic document or webpage. See ’191 Patent at 4:34-44, 9:52-56. Similarly,
the notary’s stamp includes information that is uniquely configured to display the
notary’s name, the respective commission number, the state of commission, and
the expiration of the commission. See examples reproduced above. The particular
base plate incorporated into the notary’s stamp stores this information. In addition,
the notary’s seal also comprises a uniquely configured base plate with identifying
information. See Rothman (Ex. 1012) at 7-8 (labeled as pages 30-31 in the
reference). The base plates included with the notary’s stamp and seal are
respectively the equivalent of the claimed “preferences file,” because the base
plates store uniquely configured information that is used to apply an authenticity
stamp upon actuation. See id. (stating that “[a] Notary Public uses an official seal
embosser as a means to protecting the public against persons who might
unlawfully try to alter a notarized, authentic original document and pass it off as an
original”).
36
When viewed as a totality, it is apparent that the claimed “authentication
host computer” fulfills the role of a notary, who receives identifying information
from a signator and inserts or attaches corresponding data into the certificate of
notarization, thereby creating formatted data, retrieves from the stamps base
plate—containing uniquely configured information—an authenticity stamp.
c. The ’191 Patent is directed to the same problem as traditional notarization.
Not only do the Challenged Claims directly track the fundamental economic
practice of notarizing electronic documents, but the ’191 Patent is particularly
directed to the same problem, albeit in an electronic environment, that traditional
notarization addresses—fraud prevention.3 See ’191 Patent (Ex. 1001) at 1:27-37.
As with the authentication process of the ’191 Patent, documents are routinely
notarized to verify their integrity or authenticity. See Closen (Ex. 1010) at 8
(labeled as page 10 in the reference) (stating that “[t]he most important function of
the notary public is to help assure the integrity of written documents, so that such
documents can be trusted in governmental and commercial dealings.” (emphasis
added). “A notary’s signature and official seal can validate otherwise lifeless
3 See National Notary Association, http://www.nationalnotary.org
/knowledge-center/about-notaries/what-is-notarization (Ex. 1011).
37
papers or give instant credibility to otherwise suspect documents.” Id. at 14
(unlabeled page 39 in the reference) (emphasis added); see also Rothman (Ex.
1012) at 4 (labeled as page 11 in the reference) (stating that “[a] document is
notarized so that the parties to an agreement can assure each other that this
particular document (and no other) is the authentic document . . . .”).
Thus, the ’191 Patent solves the same problem for electronic documents that
the traditional notarization process—a process which has for centuries served as a
fundamental economic practice—solves for paper documents.
d. Electronic notarization is not new.
The extension of the notary process to electronic documents is nothing
new.4 See Closen (Ex. 1010) at 10-13 (labeled as pages 26-29 in the reference).
The state of Utah, for example, has proposed a digital signature statute by which
digital signatures would be used to verify the authenticity of electronic documents.
See id. at 12 (labeled as page 28 in the reference). Under the Utah proposal, a
“certification authority” would function “like a notary” to establish the identity of
the digital signature key holder. See id. at 12 (labeled as page 28 in the reference).
4 A web page is nothing more than a structured electronic document based
on a known document markup language, such as the HyperText Markup Language
(“HTML”). See Schneier Decl. (Ex. 1009) at ¶ 70.
38
“Because a certification authority functions much like a notary, a digital signature
linked to a signer by a certification authority is tantamount to a notarized
handwritten signature.” Id. at 12-13 (labeled as pages 28-29 in the reference)
(emphasis added). This is notable in view of the fact that the ’191 Patent similarly
proposes using a digital signature as its “authenticity key.” See, e.g., ’191 Patent
(Ex. 1001) at 4:14-16 (“If the page is to be authenticated, the page is dynamically
signed with a private key and additional information”); id. at FIG. 11 (showing an
exemplary authenticity key, which is a digital signature); Schneier Decl. (Ex.
1008) at ¶ 45.
In sum, the Challenged Claims directly track the fundamental economic
practice of document notarization—doing so for the same purpose—and therefore
the Challenged Claims are directed to an abstract idea which amounts to no more
than an electronic adaptation of the practice of notarizing paper documents.
3. The Challenged Claims preempt the basic operation of electronic document notarization and therefore are patent-ineligible.
The Challenged Claims amount to no more than an electronic adaptation of
notarizing paper documents which would preempt the basic practice of notarizing
electronic documents, such as webpages, regardless of field or industry, and
therefore are directed to a patent-ineligible abstract idea. As such, the Challenged
Claims do not pass muster under the first step of the Alice/Mayo framework. In
39
addition, none of the Challenged Claims contain the kind of concrete “inventive
contribution” required under the second step of the framework.
a. The Challenged Claims recite only routine and conventional components and activities.
Beyond nominally listing generic computer components, the claims of the
’191 Patent recite the “well-understood, routine and conventional activit[ies]” of (i)
manipulating data (e.g., “[ formatting]5 . . . received data by [attaching]6 an
authenticity key to create formatted data” of claim 1), (ii) transmitting data (e.g.,
“returning . . . the formatted data” of claim 1), and (iii) data gathering (e.g.,
“[retrieving] the authenticity key . . . from the formatted data,” “locat[ing] a
preferences file,” and “[retrieving] an authenticity stamp . . . from the preferences
file” of claim 1). While using slightly different wording for each of those
concepts, independent claims 29, 31 and 32 add nothing of substance beyond the
limitations of claim 1, other than reciting certain generic components, e.g., an
“authentication processor” or a “client computer.” One of ordinary skill in the art
would understand each of these steps to be well-understood, routine and
5 The term “transforming” means “formatting.” See supra, § VI.G.
6 The term “inserting” encompasses “attaching.” See supra, § VI.E.
40
conventional activities. See Schneier Decl. (Ex. 1008) at ¶¶ 66-68; see also Mayo,
132 S. Ct. at 1298.
With respect to concept (i) of manipulating data (“[formatting] . . . received
data”) to create additional data (“formatted data”), the Federal Circuit (in a post-
Alice decision) has recently found such a concept to be unpatentably abstract.
Specifically, the Federal Circuit held that “[w]ithout additional limitations, a
process that employs mathematical algorithms to manipulate existing information
to generate additional information is not patent eligible.” Digitech Image
Technologies v. Electronics for Imaging, Inc., et al., 2014 WL 3377201 *5 (Fed.
Cir., July 11, 2014). Yet, that is at most all the “formatting” and “attaching”
limitations of the independent claims require, and therefore those operations
amount to no more than the abstract idea of manipulating data. Moreover, there is
nothing unique about the “authenticity key,” which is merely “information that
may be used to support authenticating the formatted data.” See supra § VI.C. In
short, formatting data by attaching information used to support authentication is
nothing more than data manipulation and therefore an abstract idea.
With respect to the concept (ii) of transmitting data (e.g., “returning . . . the
formatted data” of claim 1), the ’191 Patent admits that the purported “invention
may employ any number of conventional techniques for data transmission,
signaling, data processing, network control, and the like.” ’191 Patent (Ex. 1001) at
41
10:41-44 (emphasis added). The ’191 Patent also explains how “[o]ne skilled in
the art will appreciate that the network may include any system for exchanging
data or transacting business, such as the Internet, an intranet, an extranet, WAN,
LAN, satellite communications, and/or the like.” Id. at 10:67-11:3. Thus, the
recited returning of the formatted data is nothing more a conventional data
transmission operation, and therefore an abstract idea.
Finally, with respect to the concept (iii) of data gathering (e.g., “[retrieving]
the authenticity key . . . from the formatted data,” “locat[ing] a preferences file,”
and “[retrieving] an authenticity stamp . . . from the preferences file” of claim 1),
the recited locating of a “preferences file” and retrieving of an “authenticity stamp”
from that file is exactly the kind of conventional “data gathering” steps that are
abstract and cannot otherwise make a claim patent-eligible. See In re Grams, 888
F.2d 835, 840 (Fed. Cir. 1989) (“data-gathering” steps cannot make an otherwise
ineligible claim patent-eligible). Additionally, and as noted above, the end result
of the claimed invention is that a web page is stamped with an electronic seal,
which is tantamount to an electronic adaptation of the age-old practice of
notarizing paper documents using a notary signature block and notary seal. See
Supra, § VII.A.2. The Challenged Claims are therefore directed to an abstract idea
as they would preempt the basic practice of notarizing documents in the electronic
world, rather than any specific practical application of the idea. See Alice at 2356.
42
Moreover, in one of the few post-Alice district court decisions on point, the
court in Amdocs v. Openet Telecom, No. 1:10cv910, Mem. Op. & J. (E.D.Va. Oct.
24, 2014)(“Amdocs”) followed the Supreme Court’s approach in Bilski by looking
past the text of the claims to the underlying concept, which in this case is
effectively the notarization of electronic documents. See Amdocs at 4. In finding
that the claims at issue in Amdocs were ineligible for patenting, the court reasoned
that the “preempted area does not need to be broad,” but rather “the underlying
functional concern is a relative one: how much future innovation is foreclosed
relative to the contribution of the inventor.” Id. at 9 (citing Mayo). In this case,
even if the preempted field were “limited” to authenticating documents in the form
of webpages, for example, the preempted field would still subsume the practice of
authenticating web pages across the entire e-commerce world, along with
numerous other online industries. Surely, the contribution of the ’191 patent, to
the extent there is any, cannot justify foreclosing the entire field of authenticating
(i.e., notarizing) web pages, regardless of field or industry.
Thus, the first step of the Alice/Mayo framework is satisfied by the
independent claims’ inclusion of concepts (i) – (iii), any one of which would by
itself satisfy the test, and in combination function only to effectuate the electronic
adaptation of the age-old process by which paper documents are notarized. The
43
fact that the claims do not add any concrete “inventive contribution” beyond those
abstract ideas will be addressed below in Section VII.A.3.c.
b. The Challenged Claims are drawn to an abstract idea under the “machine or transformation” test.
The Challenged Claims are also drawn to an abstract idea under the
“machine or transformation” test. See Bilski, 561 U.S. 593 (the test is a “useful and
important clue” to patentability). The Challenged Claims, at most, recite generic
computer components such as “an authentication host computer,” “an
authentication processor,” “a client,” and “a client computer,” but are not “truly
drawn to [a] specific apparatus distinct from other apparatus capable of performing
the identical functions.” In re Abele, 684 F.2d 902, 909 (C.C.P.A. 1982). Indeed,
the ’191 Patent itself explicitly admits that those components were well-known,
conventional computer components. For example, the patent states that the
purported invention could be used with “any type” of computer running “any
operating system.” See ’191 Patent (Ex. 1001) at 11:7-12. The ’191 Patent
explains that user 110 (i.e., the claimed “client” or “client computer”) can use “any
type of computing device” to request and display web pages. See id. at 3:30-34.
User 110 communicates information to/from web server 120 using conventional
web pages such as “HyperText Markup Language (HTML),” and the requested
web pages are displayed on the user’s computer using a conventional browser. See
id. at 3:41-49.
44
Moreover, the claims do not satisfy the “transformation” prong of the
“machine or transformation” test. Rather, the recited “transforming . . . received
data” is merely a data formatting operation, as explained above in Section VI.G,
which the Federal Circuit has expressly held would not satisfy the Bilski test. “The
mere manipulation or reorganization of data, however, does not satisfy the
transformation prong.” Cybersource v. Retail Decisions, 654 F.3d 1366, 1375
(Fed. Cir. 2011).
Indeed, during prosecution of the ’191 Patent the applicant was only able to
overcome a Bilski-based Section 101 rejection by amended independent method
claims 1 and 32 to further recite “an authentication host computer” and/or “a client
computer,” as well as to change the recited “formatting . . . received data” to
“transforming . . . received data.” See Amendment, Apr. 1, 2009 (Ex. 1002). With
respect to the added generic computer components, the Court in Alice expressly
rejected the idea that reciting a generic computer would somehow “transform a
patent-ineligible abstract idea into a patent-eligible invention.” Alice at 2358. And
with respect to the added “transforming” operation, as detailed above in Section
VI.G and as further elaborated on below in Section VII.B, there is no written
description support for construing “transforming” to mean anything materially
different than “formatting.” Thus, between Alice’s rejection of generic computer
45
components and a proper construction of “transforming” to mean “formatting,” the
Office’s original Bilski-based rejection was never really overcome.
The Challenged Claims are, therefore, directed to one or more abstract ideas
under the first step of the Alice/Mayo framework.
c. Nothing recited in the Challenged Claims transforms the abstract idea into a patent-eligible invention.
The Challenged Claims do not contain an inventive concept sufficient to
transform the recited abstract idea into a patent-eligible invention. The Supreme
Court in Alice explicitly warned that “[g]iven the ubiquity of computers . . . [a]
wholly generic computer implementation is not generally the sort of ‘additional
feature’ that provides any ‘practical assurance that the process is more than a
drafting effort designed to monopolize the [abstract idea] itself.’” Id. Indeed, “the
mere recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Id. Yet such a “wholly generic computer
implementation” is the only thing—beside the abstract idea itself—recited by the
Challenged Claims.
Independent claims 1, 29, 31 and 32 of the ’191 Patent fail to meet this
standard, as none of those claims add anything significant to the underlying
abstract ideas of manipulating data, transmitting data, and data gathering. The
independent claims of the ’191 Patent recite “an authentication host computer,”
“an authentication processor,” “a client,” and/or “a client computer,” all of which
46
the ’191 Patent itself admits were well-known, conventional computer
components, as noted above in Section VII.A.3.b. See ’191 Patent (Ex. 1001) at
3:30-34; 3:41-49; 11:7-12; see also Schneier Decl. (Ex. 1008) at ¶ 67.
Similarly, none of the challenged dependent claims contain any inventive
concept that would otherwise transform the recited abstract idea into a patent-
eligible invention. Claim 2, for example, merely defines the “formatted data” as
being a “web page.” Web pages were similarly well-known and conventional at
the time of the ’191 Patent, and therefore limiting “formatted data” to a particular
electronic document type (i.e., web page) is insufficient to transform the abstract
ideas of the independent claims into patent eligible subject matter.
With respect to Claim 3, the “reading the formatted data” step is as well-
known and conventional of a computer operation as there is. See id. at 71. And
with respect to the “verifying the authenticity of the data” operation of claim 3, as
fully described above, this is essentially an electronic adaptation of a notary
applying a seal to an executed document as an indication that the executed
document is in fact authentic. See supra, § VII.A.2 – VII.A.3. The “search for an
‘inventive concept’” cannot be satisfied by electronically implementing the age-old
process of notarizing documents, which happen to be in the form of a web page.
Claims 4 and 5 further recite the wholly conventional computer operation of
displaying data. See Schneier Decl. (Ex. 1008) at ¶ 72. “Simply appending
47
conventional steps, specified at a high level of generality is not ‘enough’ to supply
an ‘inventive concept.’” Alice at 2357. In short, the second step of the Alice/Mayo
framework cannot be satisfied by reciting the most conventional of computer
operations in the form of displaying data.
Moreover, it should be noted that, with respect to claim 5, the “verifying”
operation is directly analogous to the “verifying” function that a notary performs
based on a notary signature block that is added to a document, where the notary
signature block is equivalent to the claimed “authenticity key” (i.e., “information
… used to support authenticating formatted data” (see supra, § VI.C)).
Finally, claim 16 makes explicit the fact that the method of claim 1 is
implemented using well-known and conventional components, while claim 30
merely provides that the color and position of a graphic image is configurable.
Claim 30 does not indicate what the graphic image is, or if it is even related to the
authenticity stamp of independent claim 29. Because graphic images of different
colors and locations within an electronic document, such as a web page, were
certainly well-known and conventional at the time, dependent claim 30 similarly
fails to transform the abstract idea of claim 29 into anything that can be regarded as
patent-eligible. See Schneier Decl. (Ex. 1008) at ¶¶ 73-74.
It is also worth noting that (as shown previously) the Challenged Claims also
fail under the “machine or transformation” test (because it requires no truly
48
specific machine distinct from other devices capable of performing the same
features) and there is no Bilski-like “transformation.” Thus, no matter the
analytical framework the Board uses, the Challenged Claims do not set forth the
kind of concrete “inventive contribution” that might save them under the second
step of the Alice/Mayo framework, and therefore the Challenged Claims are
unpatentable under 35 U.S.C. § 101.
d. The Challenged Claims must be found unpatentable under Ultramercial.
The primary Federal Circuit case upon which the Patent Owner relied to
rebut the Section 101 challenge in CBM2014-00100 is the Federal Circuit’s first
decision in Ultramercial, Inc. v. Hulu, LLC, 107 USPQ2d 1193 (Fed. Cir. 2013)
(“Ultramercial I”). See Patent Owner Preliminary Response, CBM2014-00100,
July 9, 2014 (“CBM2014-00100 Prelim. Response”) (Ex. 1009) at 58 – 62.
However, shortly after its decision in Alice, the Supreme Court granted certiorari,
vacated, and remanded Ultramercial I for further consideration. Since then, the
Federal Circuit reversed course in light of Alice and found that the claims at issue
were in fact directed to a patent-ineligible abstract idea. See Ultramercial, LLC. v.,
Hulu, LLC et al., 2010-1544 (Fed. Cir. 2014)(“Ultramercial II”). The Federal
Circuit reasoned that “[a]lthough certain additional limitations, such as consulting
an activity log, add a degree of particularity, the concept embodied by the majority
49
of the limitations describes only the abstract idea of showing an advertisement
before delivering free content.” Id. at 9-10.
The Federal Circuit’s reversal is significant since the Patent Owner, in its
Preliminary Response in the CBM2014-00100, relied heavily on Ultramercial I in
arguing that the claims of the ’191 Patent are in fact patent-eligible. Specifically,
the Patent Owner relied on the fact that “the Federal Circuit held that the claims [in
Ultramercial I] did not encompass an abstract idea because they recited ‘several
steps [that] plainly require that the method be performed through computers, on the
internet, and in a cyber-market environment.’” CBM2014-00100 Prelim. Response
(Ex. 1009) at 61-62. We now know, however, that those limitations are
insufficient, post-Alice, to pull the claims from the clutches of abstraction. Even
more condemning is the fact that the Patent Owner itself argued that the
similarities between the claims at issue in Ultramercial I and the claims of the ’191
Patent require that “the Board [] conclude that the Petitioners did not meet the
burden of showing that it is more likely than not that claim 1 is directed to an
abstract idea.” Id. at 62. In view of Ultramercial II, those similarities directly
undermine rather than support the patentability of the Challenged Claims.
50
B. GROUND 2: Claims 1 – 5, 16 And 32 Are Invalid Under 35 U.S.C. 112 if “Transforming” Means Something Different Than “Formatting.”
The Patent Owner is in a proverbial pickle when it comes to the meaning of
the recited term “transforming”/“transforms.” One the one hand, the term
“transforming”/“transforms” should be construed to mean “formatting”/“formats”
since there is no written description support for this term to mean anything
materially different than “formatting”/“formats” See supra, § VI.G. But under
that construction, the claims fall woefully short of being patent-eligible for the
reasons set forth above. See supra, § VII.A
On the other hand, if the Patent Owner attempts to save the claims from
patent-ineligibility by arguing that the term “transforming”/“transforms” means
something materially different than “formatting”/“formats,” then claims 1 – 5, 16
and 32 would necessarily be invalid under 35 U.S.C. 112, first paragraph by virtue
of failing the written description requirement thereunder.
35 U.S.C. § 112 requires that a patent convey with reasonable clarity to
those of ordinary skill in the art that, as of the filing date sought, the applicant was
in possession of the claimed invention. 35 U.S.C. §112, ¶ 1; M.P.E.P. §2163.02;
Ariad Pharms, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). In order to show possession of the claimed invention, the applicant must
describe the claimed invention with all of its limitations using such descriptive
51
means as words, structures, figures, diagrams, and formulas that fully set forth the
claimed invention. M.P.E.P. § 2163.02; see also Lockwood v. American Airlines,
Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). In this case, however, the term
“transforming”/“transforms” affecting claims 1 – 5, 16 and 32 is not sufficiently
described in the ’191 Patent to reasonably convey to one of ordinary skill in the art
that the inventor was in possession of anything more than “[formatting] . . .
received data” or “[formats] the received data.”
As set forth in detail above in Section VI.G., neither the original
specification nor the original claims contain the term “transforming,” or any
variation thereof. Rather, this term was added to the method claims (and only to
the method claims) in order to overcome the Office’s Section 101 by shamelessly
parroting back the Bilski standard. See Office Action, Jan. 9, 2009 (Ex. 1002). The
Applicant provided no indication as to where support for the “transforming” term
could be found. The only supportable operation that coincides with the
“transforming” term is the originally-recited “formatting” operation. See Schneier
Decl. (Ex. 1008) at ¶¶ 38-43; see supra § VI.G.
One of ordinary skill in the art at the time, when reading the specification,
would understand that the act of inserting an “authentication key” into “received
data” to form “formatted data,” as recited in claim 1, for example, is at best what is
described in the ’191 Patent as being the originally-claimed “formatting”
52
operation, not some other mystery “transforming” operation. See Schneier Decl.
(Ex. 1008) at ¶ 41.
Thus, to the extent that the term “transforming”/“transforms” is now
construed to deviate materially from the originally-recited “formatting”/“formats,”
the disclosure of the ’191 Patent would not reasonably convey to one of ordinary
skill in the art that the inventors had possession of a “transforming” operation that
was materially different than the originally-claimed “formatting” operation. And
under that scenario, independent claims 1 and 32, as well as dependent claims 2 –
5, must be found invalid under 35 U.S.C. § 112, ¶1 (written description).
C. GROUND 3: Houser Anticipates Claims 1, 3, 5, 16 and 29 – 32.
Houser published on February 25, 1997, which is more than one year prior
to September 6, 2000, the effective filing date of the ’191 Patent. Therefore,
Houser is prior art to the ’191 Patent under 35 U.S.C. § 102(b).
Houser, like the claims of the ’191 Patent, teaches the simple concept of
inserting an “authenticity key” (e.g., Houser’s “identifier”) into “received data”
(e.g., Houser’s “electronic document”), then using the authenticity key to verify the
authenticity of the “formatted data” ( Houser’s signed “electronic document”), and
then displaying the electronic document with an “authenticity stamp” (Houser’s
“electronic chop and/or “watermark”) so that the user can verify the integrity of the
electronic document. See, e.g., Schneier Decl. (Ex. 1008) at ¶¶ 76-77; see also
53
Markman Order at 2 (Ex. 1007) (“the claimed technology allows a user to verify
that the web page is authentic based on the presence of an authenticity stamp (e.g.,
an icon).”).
In Houser, any electronic document (see, e.g., Houser (Ex. 1004) at Figs. 7A
& 7B; 7:15-28) can be electronically “signed” so that it can be subsequently
authenticated when received by a user’s computer. See id. at 3:50-60; 7:61-65;
8:15-19; see also Schneier Decl. (Ex. 1008) at ¶ 78. Once the electronic document
is verified as authentic, a user-customized authenticity stamp is displayed. See
Houser (Ex. 1004) at 4:47-60; 5:50-65; 10:23-51; see also Schneier Decl. (Ex.
1008) at ¶ 78.
Moreover, Houser was concerned with the same problem as the ’191 Patent
—that a user may lack confidence in the integrity and/or authenticity of
information he receives. See Houser (Ex. 1004) at 1:65 to 2:15; see ’191 Patent
(Ex. 1001) at 1:34-77 (“Therefore, the user may not always be confident that the
web page being viewed is authentic”). Houser proposed an analogous solution as
the ’191 Patent, albeit years earlier. Houser teaches techniques for authenticating
electronic documents, an example of which one of ordinary skill in the art would
recognize as being a web page. See Schneier Decl. (Ex. 1008) at ¶¶ 70 and 79.
54
1. Formatted data having an authentication key
Claim elements [1a], [29a], [31a] and [32a] concern data to which a so-
called “authenticity key” has been inserted to create “formatted data.” See, e.g.,
’191 Patent (Ex. 1001) at 12:9-14:31. The ’191 Patent’s preferred embodiments
use an “authenticity key” in the form of a digital signature (see, e.g., id. at 4:13-24;
6:25-32; and 8:39-44), and the ’191 Patent and claims further confirm that the
“formatted data” can include a web page, a screen, or any of various formats for
data. See id. at 1:63-65, 4:61-63, 5:13-17, cl. 2 and 8.
Similarly, Houser discloses a system and method for verifying the integrity
or signator of an electronic document by inserting a security object, for example,
an object linking and embedding (OLE) object, into the electronic document at a
location and having a form selected by the signator. See id. at Abstract; see also
Schneier Decl. (Ex. 1008) at ¶ 80. Given that an “authenticity key” is information
that may be used to support authenticating the formatted data under the broadest
reasonable interpretation (see supra, § VI.C), an electronic document that has had
Houser’s “security object” embedded into it would similarly be “formatted data,”
within the meaning of the ’191 Patent. See id.
Houser specifically teaches that its “security object” includes both “security
information” and an “identifier,” where the identifier is used to invoke the
processing of the “security information.” See Houser (Ex. 1004) at 3:55-60; 7:31-
55
43; 7:66 – 8:2; see also Schneier Decl. (Ex. 1008) at ¶ 81. Therefore, at least
Houser’s “identifier” is an “authentication key,” within the meaning of the claims
of the ’191 Patent in that it comprises information that is used to support
authenticating an electronic document containing Houser’s security object
(“formatted data”). See supra, § VI.C; see also Schneier Decl. (Ex. 1008) at ¶ 81.
Even if the Patent Owner attempts to erroneously argue for a narrower
construction of “authenticity key” which further requires the presence of the key to
indicate that a page should be authenticated, Houser’s “identifier” would still
satisfy that narrower construction since Houser expressly discloses that the
“verification processing in the electronic security application 120 is invoked by the
identifier in the embedded security object at 160.” See Houser (Ex. 1004) at 7:66-
8:2; 7:29-44 (emphasis added).
While Houser does not expressly disclose embedding its security object in a
web page, Houser broadly discloses that its “electronic document” can be created
using “any conventional application, for example, Word for Windows™,
Amipro™, Powerpoint™, Excel™, Microsoft Windows Paintbrush™, among
numerous others. Of course, the specific application used to generate the electronic
document should not be considered to limit the present invention.” See id. at 7:15-
22. Houser additionally broadly defines the type of electronic documents to which
the invention could be applied and expressly states that its teachings are “not
56
limited by the type of document created.” See id. at 7:22-28. One skilled in the art
would readily understand that the principles of Houser would be equally applicable
to a web page, which is nothing more than another form of an electronic document
(e.g., HTML document) and a perfectly logical extension of Houser’s broad-based
principles. See Schneier Decl. (Ex. 1008) at ¶ 70 and 79.
2. Returning formatted data to enable the authenticity key to be retrieved from the formatted data to locate a preferences file so that an authenticity stamp may be retrieved from the preferences file
Claim elements [1b], [1c], [3], [29b], 29[c], [31b], [31c], [32b] and [32c]
concern retrieving and using the authenticity key to authenticate the formatted data
so that a preferences file may be located and so that an authenticity stamp may be
retrieved from the preferences file. Houser teaches each of these claim elements.
See id. at 82.
In Houser, like the ’191 Patent, the user’s computer retrieves the “identifier”
(an “authenticity key”) from the “security object” that is embedded in the
electronic document (i.e., “formatted data”), and then uses it to verify the
authenticity of the electronic document. See, e.g., Houser (Ex, 1004) at Abstract;
1:9-20; 3:55-60; 7:29-44; 7:66 – 8:2; 15:37-45; see also Schneier Decl. (Ex. 1008)
at ¶ 83. As used in the claims of the ’191 Patent, a “preferences file” is simply a
file containing one or more authenticity stamps. See Markman Order (Ex. 1007) at
10; see also supra, § VI.A. Because Houser stores a user-defined “electronic
57
chop” (an “authenticity stamp”) as part of Houser’s “security information” in the
“security object,” at least Houser’s “security information” would be a “preferences
file,” within the meaning of the claims of the ’191 Patent. See Houser (Ex. 1004) at
Abstract; 4:47-60; 5:50-65; 7:53-60; 10:23-26; 10:39-46; see also Schneier Decl.
(Ex. 1008) at ¶ 84.
Moreover, as with the “authenticity key” of the ’191 Patent, Houser’s
“identifier” enables, as a precondition, a process by which a preferences file (i.e.,
Houser’s “security information”) is located. See id. at ¶ 85. The fact that Houser’s
“security information” happens to be embedded into the electronic document as
part of the “security object” is irrelevant to the ’191 Patent, as the Challenged
Claims do not otherwise limit where the recited “preferences file” must be located,
only that it be located by some process.
In Houser, the “electronic chop” can be any graphic image (e.g., a digitized
signature graphic) that is selected by the user and displayed on an electronic
document only once the signator and “document integrity” is verified. See Houser
(Ex. 1004) at Abstract; 3:55-60; see also Schneier Decl. (Ex. 1008) at ¶ 86.
As shown in FIG. 7E, which is reproduced and annotated below for ease of
reference, the user’s “electronic chop 750” (which could be any graphic image) is
displayed if the signator and the document integrity is verified, and is removed
otherwise. See Houser (Ex. 1004) at 4:47-60; 5:50-65; and 8:13-19.
58
When the electronic document is later displayed to a user, the “identifier”
(an “authenticity key”) first invokes processing that inherently locates and decrypts
the “security information” (a “preferences file”) and calculates the document digest
based on the current state of the electronic document. See id. at Abstract; 5:3-22.
The signator and the “document integrity” are verified based upon the result of the
decryption, and the integrity of the electronic document can be verified if the
decrypted document digest matches the calculated document digest. See id.; see
also Schneier Decl. (Ex. 1008) at ¶ 87-88.
If the signator and the document integrity are confirmed, the “electronic
chop” (an “authenticated stamp”) is displayed on the document. See Houser (Ex.
1004) at 4:47-60; 5:50-65; 8:13-19. If, however, the signator or document integrity
59
is not verified, the electronic chop is not displayed. In addition, a warning message
may be displayed if verification fails. See id. 16:41-48; 19:17-26.
3. “received data”/ “returning . . . the formatted data”/“send formatted data”/“receiving, at a client computer, formatted data from a authentication host computer”
Independent claim 1 recites, in pertinent part, “received data” and “returning
. . . the formatted data.” Independent claim 29 recites “send formatted data.”
Independent claim 31 recites “received data” and “return the formatted data.”
Finally, claim 32 recites, in pertinent part, “receiving, at a client computer,
formatted data from a authentication host computer.”
As set forth above, the Board should reject any argument by the Patent
Owner that limits the claims to sending and receiving data between only remotely-
located computers or systems. See supra, § VI.F. In particular, neither the claims
nor the specification set forth any such requirement. See ’191 Patent (Ex. 1001) at
4:56-58; 8:17-18. Rather, the broadest reasonable construction of “received data”
(and the corresponding limitations in claims 29, 31 and 32) encompasses data sent
between components within or associated with the authentication host computer.
See supra, § VI.F.
Similarly, Houser discloses an “authentication host computer” of
independent claims 1 and 32 and the “authentication processor” of claim 29 in the
form of an “electronic document security application 120,” which is expressly
60
recited as being “implemented using a standard computer,” which may “also form
part of a larger system . . . .” See Schneier Decl. (Ex. 1008) at ¶ 91; Houser (Ex.
1004) at 8:50-65. Houser discloses that the “electronic document security
application 120 may be used to embed a security object in the electronic document
as represented at 130,” in the reproduced FIG. 1 below. See id. at 7:29-31.
In FIG. 1 above, the “authentication host computer” (e.g., security
application 120) is receiving data (aka “received data”) at block 110 and 150, for
example, and is returning or sending “formatted data” at block 140, for example.
See id. at 7:16 – 8:19; see Schneier Decl. (Ex. 1008) at ¶ 92. The received data is
being formatted by inserting information that can be used to authenticate the
information by virtue of embedding security object 130, for example. See Houser
(Ex. 1004) at 7:16 – 8:19; see also Schneier Decl. (Ex. 1008) at ¶ 92.
61
Thus, Houser discloses each and every one of the elements of the
Challenged Claims of the ’191 Patent, arranged as claimed, and as additionally
demonstrated by the following claim chart (see also Schneier Decl. (Ex. 1008) at
¶¶ 89-93):
CLAIM Exemplary Disclosure in Houser
[1a] A method comprising:
transforming, at an authentication host computer, received data by inserting an authenticity key to create formatted data; and
Houser’s “identifier” in the embedded “security object” is an “authenticity key,” within the meaning of the ’191 Patent.
“The integrity or the signator of an electronic document can be verified by embedding a security object, for example, supported by an object linking and embedding (OLE) capability, in the electronic document at a location selected by the signator. The embedded security object includes security information and an identifier for invoking the processing of the security information. The security information may include a document digest that characterizes the electronic document at the time the security object was embedded, a signature digest that identifies the signator and that characterizes the instance of the embedded security object, and the signator's electronic chop, which may be the signator's digitized signature or other graphic image. In addition, the security information can be encrypted using either private key encryption or public key encryption. When the electronic document is later displayed, the identifier invokes processing that decrypts the security information and calculates the document digest based on the current state of the electronic document. The signator of the electronic document can be verified based upon the result of the decryption. The integrity of the electronic document can be verified if the decrypted document digest matches the calculated document digest. If the signator and the document integrity are confirmed, the electronic chop is displayed in the document. If, however, the signator or document integrity are not verified, the electronic chop is not displayed. In addition, a warning message may be displayed if verification fails.” Abstract.
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CLAIM Exemplary Disclosure in Houser
“[T]he present invention relates to a system and method for verifying and indicating the integrity, source, and/or approval status of an electronic document, and more particularly to a method and apparatus for embedding a security object including security information into an electronic document and for using the embedded security object to invoke verification processing of the security information and the electronic document to verify the integrity, source, and/or approval status of the electronic document, and for using the results of the verification processing to control the display of video or printed indicia to thereby indicate the verification results to a user.” Column 1, lines 9-20 (hereinafter abbreviated as column number:line numbers).
“A security object embedder embeds a security object, including the assembled security information and an identifier for invoking processing of the security information, into an electronic document at a location selected by the user.” 3:55-60.
“After the document is created, an electronic document security application 120 may be used to embed a security object in the electronic document as represented at 130. The embedded security object includes security information and an identifier for invoking verification processing of the security information to verify at least one aspect or characteristic of the electronic document, for example, document integrity and/or the identity of one or more "signators" who embedded security objects in the electronic document. As will be discussed below, the operating system of the computer, responsive to the identifier, may invoke processing of the security information in the embedded security object. Alternatively, the identifier may be executable code that invokes processing directly or indirectly, e.g., by invoking a verification processing application.” 7:29-44.
“FIG. 2 provides a graphic representation of the components of one preferred embodiment of the electronic document security application 120 illustrated in FIG. 1. The electronic document security application includes an installer module 210, a controller module 220, a menu handler module 230, a signature insertion module 240, and an embedded signature interpreter 250. The user
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CLAIM Exemplary Disclosure in Houser
may interact with the electronic document security application 120 via an input device 260 and a display 270.” 8:40-49.
“Other embodiments might host the application on a different hardware suite, or split portions of the application across multiple pieces of hardware. For example, digital scanners and video frame grabbers produce electronic files which may be later modified in a manner difficult to detect. The security object could be calculated, assembled, and embedded into the output data by the digital scanner or video frame grabber, allowing subsequent viewers with object extraction and verification capability to assure themselves that the image was original.” 8:67 to 9:9.
[1b] returning, from the authentication host computer, the formatted data to enable the authenticity key to be retrieved from the formatted data and to locate a preferences file,
Houser’s “security information” in the “security object” is a “preferences file,” within the meaning of the ’191 Patent.
“A security object embedder embeds a security object, including the assembled security information and an identifier for invoking processing of the security information, into an electronic document at a location selected by the user.” 3:55-60.
“As will be discussed below, the operating system of the computer, responsive to the identifier, may invoke processing of the security information in the embedded security object. Alternatively, the identifier may be executable code that invokes processing directly or indirectly, e.g., by invoking a verification processing application.” 7:37-43.
“[A] document reviewer, who may be the signator or another who receives or otherwise accesses the signed electronic document, can examine the result of the verification processing on the computer display, for example, by looking for the electronic chop in the electronic document.” 8:15-19.
“In general, the embedded signature interpreter module 250 interprets the embedded security object to verify the identity of the signator and/or the document integrity. For example, when the embedded security object lies within an area currently displayed on the display or when a page including the embedded security
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CLAIM Exemplary Disclosure in Houser
object is printed, the identifier in the embedded security object invokes processing by the embedded signature interpreter module 250 either directly or indirectly.” 15:37-45.
“The security information extractor may extract the security information from the embedded security object.” 15:62-63.
[1c] wherein an authenticity stamp is retrieved from the preferences file.
Houser’s “electronic chop and/or “watermark graphic” is an “authenticity stamp,” within the meaning of the ’191 Patent.
“An electronic chop also may be provided in the security information. If so, the electronic document verification system may include a display controller for controlling a display device to display the electronic chop in the signed electronic document only if the verification processor verifies the signed electronic document. The electronic document verification system may further include a watermark generator for generating a watermark graphic. For example, the watermark graphic may be generated using the extracted security information and/or may be a time-dependent graphic. The display controller may thus control the display device to display the electronic chop superimposed on the watermark graphic if the verification processor verifies the signed electronic document.” 4:47-60; see also 5:50-65.
“The security information may also include an electronic chop, as will be described in greater detail below. A video chop on a display may be generated based upon the information of the electronic chop. Further, the electronic chop may be used to generate a printed chop, for example, on paper. In other words, the video and printed chops may be video and print representations of the electronic chop information.” 7:53-60.
“The electronic chop may be selectively displayed within the electronic document based on the verification processing result. Accordingly, a document reviewer, who may be the signator or another who receives or otherwise accesses the signed electronic document, can examine the result of the verification processing on the computer display, for example, by looking for the
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CLAIM Exemplary Disclosure in Houser
electronic chop in the electronic document.” 8:13-19.
“In performing electronic chop registration, the controller module 220 enables selection of an electronic chop, which may be an arbitrary static graphic object for use as the user's personal electronic indicia.” 10:23-26.
“The electronic chop may be registered in a user-friendly manner using the input device 260 and one or more interactive screens on computer display 270. FIG. 3H illustrates an interactive dialog 380 that may be used to facilitate electronic chop registration and deletion. As illustrated in FIG. 3H, each user may have several electronic chops from which to choose. For example, the user may have a formal signature, initials, and a casual scrawl.” 10:39-46.
“In one preferred embodiment, the security information includes a document digest, a signature digest, and the electronic chop.” 13:4-6.
“According to a preferred embodiment illustrated in FIG. 8, the signator's electronic chop extracted from the embedded security object may displayed or printed to indicate that the verification results.” 16:38-41.
[3] The method of claim 1, further comprising:
reading the formatted data; and,
verifying authenticity of the formatted data based on the
“A security object embedder embeds a security object, including the assembled security information and an identifier for invoking processing of the security information, into an electronic document at a location selected by the user.” 3:55-60.
“The embedded security object includes security information and an identifier for invoking verification processing of the security information to verify at least one aspect or characteristic of the electronic document, for example, document integrity and/or the identity of one or more "signators" who embedded security objects in the electronic document. As will be discussed below, the operating system of the computer, responsive to the identifier, may invoke processing of the security information in the embedded security object. Alternatively, the identifier may be
66
CLAIM Exemplary Disclosure in Houser
authenticity key in response to the formatted data including the authenticity key.
executable code that invokes processing directly or indirectly, e.g., by invoking a verification processing application.” 7:31-43.
“When the signed electronic document is received or recalled from memory at 150, verification processing in the electronic security application 120 is invoked by the identifier in the embedded security object at 160.” 7:66 – 8:2.
“After the document is created, an electronic document security application 120 may be used to embed a security object in the electronic document as represented at 130. The embedded security object includes security information and an identifier for invoking verification processing of the security information to verify at least one aspect or characteristic of the electronic document, for example, document integrity and/or the identity of one or more "signators" who embedded security objects in the electronic document. As will be discussed below, the operating system of the computer, responsive to the identifier, may invoke processing of the security information in the embedded security object. Alternatively, the identifier may be executable code that invokes processing directly or indirectly, e.g., by invoking a verification processing application.” 7:29-44.
[5] The method of claim 3, wherein the authenticity stamp is displayed for formatted data that is verified.
“An electronic chop also may be provided in the security information. If so, the electronic document verification system may include a display controller for controlling a display device to display the electronic chop in the signed electronic document only if the verification processor verifies the signed electronic document. The electronic document verification system may further include a watermark generator for generating a watermark graphic. For example, the watermark graphic may be generated using the extracted security information and/or may be a time-dependent graphic. The display controller may thus control the display device to display the electronic chop superimposed on the watermark graphic if the verification processor verifies the signed electronic document.” 4:47-60; see also 5:50-65.
“The electronic chop may be selectively displayed within the electronic document based on the verification processing result.
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CLAIM Exemplary Disclosure in Houser
Accordingly, a document reviewer, who may be the signator or another who receives or otherwise accesses the signed electronic document, can examine the result of the verification processing on the computer display, for example, by looking for the electronic chop in the electronic document.” 8:13-19.
[16] The method of claim 1, wherein the returning includes returning the formatted data to at least one of: a Personal Computer (PC), Personal Digital Assistant (PDA), a cellular telephone, or an email device.
“When the document is retrieved or received, the embedded signature interpreter module 250 is invoked either directly or indirectly by the identifier in the embedded security object.” 15:25-28.
“FIG. 2 provides a graphic representation of the components of one preferred embodiment of the electronic document security application 120 illustrated in FIG. 1. The electronic document security application includes an installer module 210, a controller module 220, a menu handler module 230, a signature insertion module 240, and an embedded signature interpreter 250. The user may interact with the electronic document security application 120 via an input device 260 and a display 270.
The electronic security application may be implemented using a standard computer, such as an IBM PC-compatible computer (e.g., 33 MHz 80486 processor, 8 Mbyte RAM, 300 Mbyte hardrive) using DOS™ in conjunction with WINDOWS™ 3.1, which supports OLE 2.0. Both DOS™ and WINDOWS™ 3.1 are available from Microsoft Corporation of Redmond, Wash. The computer also preferably includes a display (e.g., 640X480 pixel resolution color VGA monitor) and a keyboard for facilitating user interaction. The computer may be coupled to a local area network (LAN) such as ETHERNET™ and a wide area network (WAN) such as the Internet to facilitate communication with other computers. The installer module 210 is provided for controlling installation in a user's computer. The computer may also form a part of a larger system, such as a photographic image system, for example.” 8:40-65.
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CLAIM Exemplary Disclosure in Houser
“[A] document reviewer, who may be the signator or another who receives or otherwise accesses the signed electronic document, can examine the result of the verification processing on the computer display, for example, by looking for the electronic chop in the electronic document.” 8:15-19.
[29a] An authentication system comprising: an authentication processor configured to send formatted data having an authenticity key to a client,
Houser’s “identifier” in the embedded “security object” is an “authenticity key,” within the meaning of the ’191 Patent.
“After the document is created, an electronic document security application 120 may be used to embed a security object in the electronic document as represented at 130. The embedded security object includes security information and an identifier for invoking verification processing of the security information to verify at least one aspect or characteristic of the electronic document, for example, document integrity and/or the identity of one or more "signators" who embedded security objects in the electronic document.
. . .
Of course, multiple security objects may be embedded in a single electronic document. The "signed" electronic document (i.e., the electronic document including one or more embedded security objects) may be stored and/or transmitted to another party as represented at 140.” 7:29-65.
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CLAIM Exemplary Disclosure in Houser
“[A] document reviewer, who may be the signator or another who receives or otherwise accesses the signed electronic document, can examine the result of the verification processing on the computer display, for example, by looking for the electronic chop in the electronic document.” 8:15-19. See also supra, analysis of element 1(a).
[29b] wherein the authenticity key enables location of a preferences file, and
Houser’s “security information” in the “security object” is a “preferences file,” within the meaning of the ’191 Patent.
“As will be discussed below, the operating system of the computer, responsive to the identifier, may invoke processing of the security information in the embedded security object. Alternatively, the identifier may be executable code that invokes processing directly or indirectly, e.g., by invoking a verification processing application.” 7:37-43.
“In general, the embedded signature interpreter module 250 interprets the embedded security object to verify the identity of the signator and/or the document integrity. For example, when the embedded security object lies within an area currently displayed on the display or when a page including the embedded security object is printed, the identifier in the embedded security object invokes processing by the embedded signature interpreter module 250 either directly or indirectly.” 15:37-45.
“The security information extractor may extract the security information from the embedded security object.” 15:62-63. See
70
CLAIM Exemplary Disclosure in Houser
also supra, analysis of element 1(b).
[29c] wherein an authenticity stamp is retrieved from the preferences file.
This element corresponds to element 1(c) and therefore is disclosed by Houser for the reasons set forth above. See supra, analysis of element 1(c).
[30] The system of claim 29, wherein at least one of color or positioning of a graphic image within the formatted data is configurable.
“The integrity . . . of an electronic document can be verified by embedding a security object, for example, supported by an object linking and embedding (OLE) capability, in the electronic document at a location selected by the signator. The embedded security object includes security information and an identifier for invoking the processing of the security information.” Abstract.
“After setting available parameters, the user may enter an instruction, for example, by selecting an "OK" button, that causes a security object, including the selected electronic chop, to be embedded in the electronic document. Because the portion of the electronic document including the embedded security object is currently displayed on the display, the user's electronic chop 750 is ultimately displayed at the location of the cursor as shown in FIG. 7E.” 13:57-64.
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As independent claims 31 and 32 include no additional limitations beyond
those present in independent claims 1 and/or 29, the exemplary disclosures in
Houser cited in the claim chart above are similarly applicable to independent
claims 31 and 32 and therefore need not be repeated here. See Schneier Decl. (Ex.
1008) at ¶¶ 75-93.
D. Ground 4: Claims 2 and 4 Are Obvious Under 35 U.S.C. 103 Over Houser In View Of Yoshiura.
1. The combination of Houser and Yoshiura renders Claim 2 obvious under 35 U.S.C. § 103.
Claim 2 of the ’191 Patent further defines the “formatted data” as being a
web page. While Houser does not explicitly state that the “electronic documents”
that are authenticable using its methodology include web pages, Houser broadly
indicates that “it should be clear that the present invention is not limited by the
type of document created.” See Houser (Ex. 1004) at 7:26-28.
However, in the same field of endeavor Yoshiura expressly teaches
“check[ing] the validity” (i.e., authenticating) of a “Web page” by using a “digital
signature” (i.e., an “authenticity key”) embedded in a “mark” on the web page (i.e.,
the “formatted data”), and displaying a “message . . . stating that the mark was
validated” (i.e., the “authenticity stamp”). See, e.g., Yoshiura (Ex. 1005) at 37:8-
31, 37:42-38:8, Figs. 9, 28, 29; see also Schneier Decl. (Ex. 1008) at ¶¶ 94-97.
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It would have been obvious to one of ordinary skill in the art to extend the
“electronic document” authentication process of Houser to also include
authenticating web pages, as taught by Yoshiura, in view of the fact that both
references were motivated by the same concern (see, e.g., Yoshiura (Ex. 1005) at
6:49-7:8; see e.g., Houser (Ex. 1004) at 1:65 to 2:15), and both references solved
the problem using the same basic approach of applying a visual indicator to the
electronic document to indicate to its recipient/reviewer that the information has
been authenticated or verified. See Schneier Decl. (Ex. 1008) at ¶ 98. This would
have enabled one of ordinary skill in the art to extend the usefulness of Houser’s
“electronic security application” to include an increasingly popular form of
electronic document, i.e., a web page. See id.
Therefore, claim 2 is unpatentable over the combination of Houser and
Yoshiura under 35 U.S.C. § 103.
2. The combination of Houser and Yoshiura renders Claim 4 obvious under 35 U.S.C. § 103.
Claim 4 further recites that the formatted data is displayed “in response to
the verification of the authenticity key.” While Houser does not explicitly state
that the “electronic document” is displayed upon verification of the embedded
“security object,” Yoshiura is clear that its web page (i.e., formatted data) is not
displayed until the web page is authenticated. See, e.g., Yoshiura (Ex. 1005) at
29:8-13; 32:11-17; see also Schneier Decl. (Ex. 1008) at ¶ 99. Thus, the
73
combination of Houser and Yoshiura is identical to the embodiment of claim 4 of
the ’191 Patent.
One of ordinary skill in the art would have been motivated to display the
“electronic document” of Houser only once the authentication process was
complete, as taught by Yoshiura, because this would facilitate the viewer’s ability
to detect that the document has not been authenticated. See id. at ¶ 100. This
would have been obvious to one of ordinary skill in the art in view of the fact that
Houser is concerned with providing a clear indication to the document reviewer of
the integrity of the document. See Houser (Ex. 1004) at 1:9-20; see also Schneier
Decl. (Ex. 1008) at ¶ 100.
Therefore, claim 4 is unpatentable over the combination of Houser and
Yoshiura under 35 U.S.C. § 103.
VIII. THIS PETITION PRESENTS FUNDAMENTALLY DIFFERENT ISSUES FOR THE BOARD TO CONSIDERED.
As noted above, the Board has instituted inter partes review of the ’191
Patent in IPR2014-00475, and has also instituted CBMR of the ’191 Patent in
CBM2014-00100 (collectively, the “Previous PTAB Proceedings”). However, the
issues presented by this Petition are unique and fundamentally different than any of
the issues presented in the Previous PTAB Proceedings.
74
A. The Issues Raised in This Petition Under 35 U.S.C. § 101 (Ground 1) Are Fundamentally Different Than CBM2014-00100.
The petitioner in CBM2014-00100 challenged the patentability of claims 1 –
32 of the ’191 Patent under 35 U.S.C. § 101. However, both the facts and bases
underlying T. Rowe Price’s attack in this Petition of the Challenged Claims under
35 U.S.C. § 101 are fundamentally different than those at issue in CBM2014-
00100.
First and foremost, the Board in CBM2014-00100 was not asked to construe
the term “transforming”/“transforms,” as recited in independent claims 1 and 32.
Rather, the Board’s decision in CBM2014-00100 assumed that the term
“transforming”/“transforms” was entitled to its plain and ordinary meaning. See
CBM2014-00100 Decision (Ex. 1003) at 7. Specifically, the Board in that case
provided the following rationale for its decision:
“We are not persuaded that “transforming . . . received
data by inserting an authenticity key to create formatted
data” fails to satisfy the transformation prong. The claim
language recites “transforming” one thing (“received
data”) “to create” something else (“formatted data”) and
further recites a particular manner of transforming (“by
inserting an authenticity key”).”
CBM2014-00100 Decision (Ex. 1003) at 24 (emphasis added).
In view of the rationale provided by the Board in its Decision in CBM2014-
00100, and the repeated reference to the “transforming” operation, it is very likely
75
that the construction applied by the Board to this element was directly impactful to
the Board’s decision to not institute the CBMR on the basis of 35 U.S.C. § 101.
See id. at 20, 22 – 24.
Thus, because the Board’s decision was based on the plain and ordinary
meaning of these terms (as opposed to the properly construed meaning of
“formatting/“formats”), the issues being now presented under 35 U.S.C. § 101 are
fundamentally different than those previously considered by the Board.
B. The Federal Circuit Has Reversed Ultramercial I.
As noted above, the Federal Circuit has reversed Ultramercial I. In
Ultramercial II, the Federal Circuit held that, under the Supreme Court’s decision
in Alice, the additional limitations set forth in a claim may add a degree of
particularity, but are insufficient to save a claim from being directed to an abstract
idea under 35 U.S.C. § 101. See Ultramercial II at 9-10.
This is a significant development because the Patent Owner, in its
Preliminary Response in the CBM2014-00100, relied heavily on the Federal
Circuit’s (now reversed) decision in Ultramercial I to argue that the claims of the
’191 Patent are patent-eligible. The Patent Owner specifically argued that the
similarities between the claims at issue in Ultramercial I and the claims of the ’191
Patent require “the Board [] conclude that the Petitioners did not meet the burden
76
of showing that it is more likely than not that claim 1 is directed to an abstract
idea.” CBM2014-00100 Prelim. Response (Ex. 1009) at 62.
In view of the fact that the primary case previously relied upon by the Patent
Owner in support of patentability under Section 101 has been reversed, the issues
now presented under 35 U.S.C. § 101 are substantially different than those
previously considered by the PTAB.
C. The Board In CBM2014-00100 Was Not Presented With Any Evidence Regarding The Electronic Adaptation Of The Paper Document Notarization Process.
In CBM2014-00100, the petitioner analogized claim 1 of the ’191 Patent to
the practice of placing a stamp or seal on a document to indicate the authenticity of
the document. However, the Board found two issues with this analogy. First, the
petitioner did not “tie adequately the claim language to the purported abstract
concept of placing a trusted stamp or seal on a document.” CBM2014-00100
Decision (Ex. 1003) at 21. Second, the petitioner did not provide sufficient
evidence “that the placing of a trusted stamp or seal on a document is ‘a
fundamental economic practice’ or a ‘building block of the modern economy.” Id.
In contrast, T. Rowe Price in this Petition has directly tied the language of
the claims to the document notarization process, as set forth in detail above in
Section VII.A.2. Moreover, T. Rowe Price has shown that document notarization
is both a “fundamental economic practice” and a “building block of the modern
77
economy” in view of the fact that most documents that effectuate the transfer of
tangible property, such as will, trusts and deeds, are required under state law to be
notarized. See supra, § VII.A.2.
D. Petitioners’ Challenge Under 35 U.S.C. § 112 (Ground 2) Is New and Was Not Raised in the Previous PTAB Proceedings.
The issues presented by Ground 2 of this Petition are unique and
substantially different than any of the issues presented in the Previous PTAB
Proceeding. While CBM2014-00100 did raise an unrelated, conditional ground
under 35 U.S.C. § 112, it was directed to a different aspect of the claims and,
importantly, was based on a conditional construction position that the Patent
Owner did not end up taking, and therefore was not considered by the Board.
E. Houser Was Not Considered in the Previous PTAB Proceedings.
The prior art issues presented in this Petition are almost entirely new
because the vast majority of the Challenged Claims are challenged as being
anticipated by Houser, a reference that was not considered in the Previous PTAB
Proceedings in any fashion. Moreover, while Yoshiura was considered on a
limited basis in IPR2014-00475, it is being relied upon in this Petition as a
secondary reference in a completely different combination (combined with
Houser), and with respect to only two of the Challenged Claims.
78
Therefore, the reasoning and basis for challenging the patentability of the
claims of the ’191 Patent in this Petition are substantially different than those
previously considered.
IX. MANDATORY NOTICES UNDER 37 C.F.R. §§ 42.8(a)(1)
A. Real party-in-interest under 37 C.F.R. § 42.8(b)(1)
The real parties-in-interest are T. Rowe Price Investment Services, Inc.; T.
Rowe Price Associates, Inc.; Datacard Group; and Entrust, Inc.
B. Related matters under 37 C.F.R. § 42.8(b)(2)
The following proceedings relate to the ’191 Patent and may affect, or be
affected by, a decision in the proceeding:
The lawsuit against T. Rowe Price, is captioned Secure Axcess, LLC v. T.
Rowe Price Investment Services, Inc. et al., No. 6:13-cv-00787-LED (E.D. Tex.)
(See Ex. 1006). Secure Axcess has also asserted the ’191 Patent in the following
pending lawsuits: 6:13-cv-00722-LED; 6:13-cv-00717-LED; 6:10-cv-00670-LED;
6:13-cv-00718-LED; 6:13-cv-00720-LED; 6:13-cv-00721-LED; 6:13-cv-00782-
LED; 6:13-cv-00783-LED; 6:13-cv-00723-LED; 6:13-cv-00784-LED; 6:13-cv-
00724-LED; 6:13-cv-00785-LED; 6:13-cv-00786-LED; 6:13-cv-00788-LED;
6:13-cv-00779-LED; 6:13-cv-00780-LED; 6:13-cv-00781-LED.
In addition to the above lawsuits, inter partes review of claims 1 – 23 and 25
– 32 of the ’191 Patent was instituted on September 9, 2014 and assigned case
number IPR2014-00475. Finally, covered business method patent review of
79
claims 1 – 32 of the ’191 Patent was instituted on September 9, 2014 and assigned
case number CBM2014-00100.
C. Lead and back-up counsel under 37 C.F.R. § 42.8(b)(3)
Lead Counsel Back-Up Counsel Jonathan Lindsay (Reg. No. 45,810) CROWELL & MORING LLP Intellectual Property Group 1001 Pennsylvania Avenue, N.W. Washington, DC 20004-2595 Telephone No.: (949) 798-1325 Facsimile No.: (949) 263-8414 [email protected]
Jeffrey D. Sanok (Reg. No. 32,169) CROWELL & MORING LLP Intellectual Property Group 1001 Pennsylvania Avenue, N.W. Washington, DC 20004-2595 Telephone No.: (202) 624-2995 Facsimile No.: (202) 628-8844 [email protected]
D. Service information under 37 C.F.R. § 42.8(b)(4)
Service via hand-delivery may be made at the postal mailing address of the
lead and back-up counsel designated above. T. Rowe Price consents to electronic
service by e-mail at [email protected]; [email protected].
E. Supporting evidence under 37 C.F.R. § 42.104(b)(5)
The exhibit numbers of the supporting evidence relied upon to support the
challenge and the relevance of the evidence to the challenge raised, including
identifying specific portions of the evidence that support the challenge, are
provided herein. An Exhibit List identifying the exhibits is also attached. The
technical information and grounds for rejection explained in detail in the Petition
are further supported by the Declaration of Bruce Schneier, attached as Exhibit
1008.
80
X. CONCLUSION
For the foregoing reasons, there is a reasonable likelihood that claims 1 – 5,
16 and 29 – 32 will be held unpatentable. Therefore, T. Rowe Price respectfully
request that the Board grant this Petition for CBMR of the ’191 Patent. T. Rowe
Price authorizes the Patent and Trademark Office to charge any additional fees due
with this filing to Deposit Acct. No. 05-1323 (Reference No. 106219.0000015).
Respectfully submitted,
December 21, 2014
/Jonathan Lindsay/ Jonathan M. Lindsay, Reg. No. 45,810
(Lead Counsel) CROWELL & MORING LLP Intellectual Property Group P.O. Box 14300 Washington, DC 20044-4300 Telephone No.: (202) 624-2500 Facsimile No.: (202) 628-8844
ATTORNEYS FOR PETITIONER
CERTIFICATE OF SERVICE UNDER 37 C.F.R. §§ 42.6(e), 42.105(a)
Pursuant to 37 C.P.R. §§ 42.6(e) and 42.105(a), this is to certify that I
caused to be served a true and correct copy of the foregoing “PETITION FOR
COVERED BUSINESS METHOD REVIEW OF U.S. PATENT NO. 7,631,191”
by FEDERAL EXPRESS®, on this 21st day of November, 2014 on the Patent
Owner at the correspondence address of record for U.S. Patent No. 7,631,191, as
follows:
MARTIN & FERRARO, LLP1557 LAKE O'PINES STREET, NE
HARTVILLE, OH 44632
Respectfully submitted,
November 21, 2014/Jonathan Lindsay/Jonathan M. Lindsay, Reg. No. 45,810(Lead Counsel)CROWELL & MORING LLPIntellectual Property GroupP.O. Box 14300Washington, DC 20044-4300Telephone No.: (202) 624-2500Facsimile No.: (202) 628-8844