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` Covered Business Method Patent Review
`United States Patent No. 5,949,880
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`§
`§
`§
`§
`§
`§
`§
`§
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`Attorney Docket No.:
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`109879-0001-801
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`Customer No. 28120
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`Petitioner: Branch Banking and
`
` Trust Company
`
`Inventors: Stephen M. Curry, Donald W.
` Loomis, Michael L. Bolan
`
`United States Patent No.: 5,949,880
`
`Formerly Application No.: 08/978,798
`Issue Date: Sept. 7, 1999
`
`Filing Date: Nov. 26, 1997
`Former Group Art Unit: 2766
`Former Examiner: Gail O. Hayes
`
`For: Transfer of Valuable Information Between a Secure Module and Another Mod-
`ule
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`UNITED STATES PATENT NO. 5,949,880 PURSUANT TO 35 U.S.C. § 321,
`37 C.F.R. § 42.304
`
`Pursuant to 35 U.S.C. § 321 and 37 C.F.R. § 42.304, the undersigned, on behalf
`
`of and acting in a representative capacity for petitioner, Branch Banking and Trust
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`Company (“Petitioner” or “BB&T,” and real party in interest), hereby petitions for
`
`review under the transitional program for covered business method patents of claims
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`1-4 of U.S. Patent No. 5,949,880 (“the ’880 Patent”), issued to Stephen M. Curry et al.
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`and currently assigned to Maxim Integrated Products, Inc. (“Maxim,” also referred to
`
`as “Applicants,” “Patent Owner,” or “Patentee”). Petitioner hereby asserts that it is
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`more likely than not that at least one of the challenged claims is unpatentable for the
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`reasons set forth herein and respectfully requests review of, and judgment against,
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` Covered Business Method Patent Review
`United States Patent No. 5,949,880
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`claims 1-4 as unpatentable under 35 U.S.C. §§ 101 and 102.
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`ii
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` Covered Business Method Patent Review
`United States Patent No. 5,949,880
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`TABLE OF CONTENTS
`
`I. 
`II. 
`
`INTRODUCTION ....................................................................................................... 1 
`PETITIONER HAS STANDING ............................................................................ 2 
`A. 
`The ’880 Patent Is a Covered Business Method Patent ............................... 2 
`B. 
`Related Matters; Petitioner Is a Real Party In Interest Sued for and
`Charged With Infringement ............................................................................. 7 
`III.  OVERVIEW OF SPECIFIC GROUNDS FOR WHICH IT IS MORE
`LIKELY THAN NOT THAT THE CHALLENGED CLAIMS (1-4) OF
`THE ’880 PATENT ARE UNPATENTABLE ...................................................... 9 
`IV.  BACKGROUND INFORMATION FOR THE ’880 PATENT ........................ 9 
`A. 
`The ’880 Patent and its Prosecution History ............................................... 10 
`1. 
`File History of the Parent ’510 Patent .............................................. 10 
`2. 
`File History of the ’880 Patent ........................................................... 11 
`V.  DETAILED EXPLANATION OF REASONS FOR RELIEF REQUESTED,
`SHOWING IT IS MORE LIKELY THAN NOT THAT AT LEAST ONE
`OF THE CHALLENGED CLAIMS IS UNPATENTABLE ............................ 12 
`A. 
`Claim Construction .......................................................................................... 12 
`B. 
`The Challenged Claims Are Invalid Under § 101 ....................................... 19 
`1. 
`The Challenged Claims Recite Generic, Conventional, and
`Routine Technology ............................................................................. 19 
`Considered as a Whole, The Patent Claims Are Directed
`To An Abstract Idea That Preempts Practical Applications ......... 22 
`The ’880 Claims Fail the Machine or Transformation Test .......... 31 
`Under Maxim’s Litigation Constructions, the Challenged
`Claims are Even Broader and More Abstract .................................. 38 
`The Challenged Claims are Invalid Under § 102 ........................................ 39 
`1. 
`The Challenged Claims Are Anticipated By Nakano ..................... 39 
`2. 
`The Challenged Claims Are Anticipated By Gutman .................... 57 
`VI.  CONCLUSION........................................................................................................... 80 
`
`2. 
`
`3. 
`4. 
`
`C. 
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`EXHIBIT LIST
`Exhibit 1001
`Exhibit 1002
`Exhibit 1003
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`Exhibit 1004
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`Exhibit 1005
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`Exhibit 1006
`Exhibit 1007
`Exhibit 1008
`
`Exhibit 1009
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`Exhibit 1010
`
`Exhibit 1011
`
`Exhibit 1012
`Exhibit 1013
`
`Exhibit 1014
`
`Exhibit 1015
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` Covered Business Method Patent Review
`United States Patent No. 5,949,880
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`United States Patent No. 5,949,880
`United States Patent No. 5,949,880 File History
`United States Patent No. 4,839,504, filed on July 17, 1987 and
`issued on June 13, 1989, to Nakano (“Nakano”)
`United States Patent No. 5,221,838, filed on October 20,
`1992 , and issued on June 22, 1993, to Gutman et al. (“Gut-
`man”)
`Maxim Integrated Products, Inc.’s Answer to Complaint for
`Declaratory Judgment and Counterclaims (ECF No. 46), In re:
`Maxim Integrated Prods., Inc., MDL No. 2354, No. 2:12-mc-
`00244 (W.D. Pa.)
`United States Patent No. 5,940,510
`United States Patent No. 5,940,510 File History
`Joint Disputed Claim Terms Chart (ECF No. 580-1), In re:
`Maxim Integrated Prods., Inc., MDL No. 2354, No. 2:12-mc-
`00244 (W.D. Pa.)
`Maxim’s Corrected Opening Claim Construction Brief (ECF
`No. 634), In re: Maxim Integrated Prods., Inc., MDL No. 2354,
`No. 2:12-mc-00244 (W.D. Pa.)
`Opposing Parties’ Responsive Claim Construction Brief (ECF
`No. 642), In re: Maxim Integrated Prods., Inc., MDL No. 2354,
`No. 2:12-mc-00244 (W.D. Pa.)
`Maxim’s Reply Claim Construction Brief (ECF No. 651), In re:
`Maxim Integrated Prods., Inc., MDL No. 2354, No. 2:12-mc-
`00244 (W.D. Pa.)
`Maxim’s Technology Tutorial, Aug. 29, 2013
`Special Master’s Provisional Claim Constructions To Facilitate
`Oral Hearing (ECF No. 670), In re: Maxim Integrated Prods., Inc.,
`MDL No. 2354, No. 2:12-mc-00244 (W.D. Pa.)
`Joint Disputed Claim Terms Chart (ECF No. 677-1), In re:
`Maxim Integrated Prods., Inc., MDL No. 2354, No. 2:12-mc-
`00244 (W.D. Pa.)
`Declaration of Dr. J.D. Tygar (ECF No. 634-35), In re: Maxim
`
`ii
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`EXHIBIT LIST
`
`Exhibit 1016
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`Exhibit 1017
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`Exhibit 1018
`Exhibit 1019
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` Covered Business Method Patent Review
`United States Patent No. 5,949,880
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`Integrated Prods., Inc., MDL No. 2354, No. 2:12-mc-00244
`(W.D. Pa.)
`Declaration of Donald Alpert (ECF No. 634-37), In re: Maxim
`Integrated Prods., Inc., MDL No. 2354, No. 2:12-mc-00244
`(W.D. Pa.)
`Declaration of Dr. Stuart G. Stubblebine (ECF No. 642-24),
`In re: Maxim Integrated Prods., Inc., MDL No. 2354, No. 2:12-mc-
`00244 (W.D. Pa.)
`Declaration of Dr. Vijay K. Madisetti
`Declaration of Henry Y. Huang
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`iii
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`I.
`
`INTRODUCTION
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` Covered Business Method Patent Review
`United States Patent No. 5,949,880
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`The four challenged claims of the ’880 Patent—all method claims—are nothing
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`more than an attempt to patent a well-known and unpatentable abstract idea: elec-
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`tronically transferring value (claim 2 specifies a “monetary equivalent”) from a source
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`to a recipient through a generic electronic device (claims 3 and 4 add that the value is
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`encrypted data). The patent discloses no special or particular technology to perform
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`these rudimentary steps—indeed, it discloses no new technology at all—and patentee
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`Maxim has, in litigation, made clear that it reads the ’880 Patent to preempt the basic
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`idea of electronically passing a value (especially money and monetary equivalents) and
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`performing arithmetic on the value. Maxim asserts, for example, that the ’880 Pa-
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`tent’s claims cover contemporary smartphones with mobile banking software installed
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`even though that technology did not exist in 1996. See Ex. 1005 ¶ 22. The claims do
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`not present patent-eligible subject matter under 35 U.S.C. § 101. Instead, they
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`preempt a basic concept, which cannot be remedied by claiming the abstract idea with
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`multiple steps or by claiming performance by a general-purpose computer. E.g.,
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`Gottschalk v. Benson, 409 U.S. 63, 64, 71-72 (1972) (claim for converting binary-coded
`
`decimals through seven separate steps using a general-purpose computer including
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`storing, shifting, and adding was invalid for claiming an unpatentable abstract idea);
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`DealerTrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
`
`The broad claims of the ’880 Patent are anticipated by at least two prior art pa-
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`tents (never before submitted to the Patent Office) from Casio and Motorola. As de-
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`United States Patent No. 5,949,880
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`tailed below in Section V.C, “Nakano” (filed by Casio) (Ex. 1003) discloses loading a
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`monetary value onto an integrated circuit (“IC”) card from a bank host computer af-
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`ter cash is submitted through an Automatic Teller Machine (“ATM”), as well as mak-
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`ing purchases by debiting the IC card in exchange for goods. Cf. Ex. 1001 at 2:66-
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`3:27. “Gutman” (filed by Motorola) (Ex. 1004) discloses an electronic wallet in the
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`context of a system for communicating balance information with a computer system
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`at a merchant or financial institution, where cash and purchase transactions are per-
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`formed by, e.g., updating the amount of an account balance stored in the electronic
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`wallet and at the financial institution. Cf. Ex. 1001 at 2:46-58. Each of these prior art
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`references discloses each and every element of the challenged claims of the ’880 Pa-
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`tent—earlier and in far greater detail than the ’880 Patent itself.
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`II.
`
`PETITIONER HAS STANDING
`A.
`The ’880 Patent is a “covered business method patent” under § 18(d)(1) of the
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`The ’880 Patent Is a Covered Business Method Patent
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`Leahy-Smith America Invents Act, Pub. L. 112-29 (“AIA”) and § 42.301. All four
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`challenged claims of the ’880 Patent are directed to activities that are financial in na-
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`ture—including, as recited in claim 2, the transfer of value data representing “a mone-
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`tary equivalent.”1 See AIA § 18(d)(1); 37 C.F.R. § 42.301(a). See also 77 Fed. Reg.
`
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`1 The ’880’s U.S. classifications include 705/39 and 705/42 (“Data processing: finan-
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`cial, business practice, management, or cost/price determination” “Including funds
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`2
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`United States Patent No. 5,949,880
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`48,734, 48,735 (Aug. 14, 2012) (“[T]he definition of covered business method patent
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`was drafted to encompass patents ‘claiming activities that are financial in nature, inci-
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`dental to a financial activity or complementary to a financial activity.’”) (citation omitted) (all
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`emphases herein are added unless otherwise noted); id. at 48,736 (“A patent having one
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`or more claims directed to a covered business method is a covered business method pa-
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`tent for purposes of the review, even if the patent includes additional claims.”). “The term
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`financial is an adjective that simply means relating to monetary matters,” SAP Am., Inc. v.
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`Versata Dev. Grp., Inc., CBM2012-00001, Paper 36 at 23 (P.T.A.B. Jan. 9, 2012), and
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`claim 2 recites that the “first value datum represents a monetary equivalent.” The patent
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`further states, e.g., that “the disclosed system, apparatus and method are useful for en-
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`abling a user to fill a portable module with a cash equivalent and to spend the cash equiva-
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`lent at a variety of locations,” Ex. 1001 at Abstract, and explains that “[t]he portable mod-
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`ule can be used as a cash equivalent when buying products and services in the market place,” id.
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`at 1:63-65. See also id. at 1:25-28 (“The present invention relates to transferring units of value
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`between a microprocessor based secure module and another module used for carrying
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`a monetary equivalent.”), 1:52-54 (citing “need for an electronic system that allows a con-
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`transfer or credit transaction” and “Remote banking (e.g., home banking)”), and its
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`fields of search added 705/40 (“Bill distribution or payment”). See Ex. 1001 at [52],
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`[58]. “[P]atents subject to covered business method patent review are anticipated to
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`be typically classifiable in Class 705.” 77 Fed. Reg. 48,734, 48,739 (Aug. 14, 2012).
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`United States Patent No. 5,949,880
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`sumer to fill an electronic module with a cash equivalent in the same way a consumer fills his wallet
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`with cash.”), 2:1-5, 2:35-37 (“portable module 102 may contain information that repre-
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`sents units of exchange or a currency equivalent.”), 2:66-1:2 (“device…can be connected to a
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`variety of other devices… includ[ing, e.g.,] but … not limited to a cash acceptor 110, an
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`automated teller machine (ATM) 112, a credit card reader 114…”).
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`Each of the ’880 Patent’s disclosed embodiments is also financial, describing
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`transferring digital money or value used as payment. Example A (“Transferring Units
`
`of Exchange Out of a Portable Module”) describes how an “amount of value (the
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`monetary value)” stored in the portable module is used “to pay a train fare.” Id. at 7:13-
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`8:29 16 (§ II.A), Fig. 4. Example B (“Transferring Units of Exchange Into the Porta-
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`ble Module”) describes how a portable module’s user can “‘fill it up’ with value,” that
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`is, “take cash out of an ATM machine and instead of pocketing the cash, . . . put the cash
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`value into the portable module.” Id. at 8:31-9:16 (§ II.B), Fig. 5.
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`While the claims at issue reference certain conventional components, the ’880
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`Patent does not claim a “technological invention” because it does not claim “subject
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`matter as a whole [that] recites a technological feature that is novel and unobvious over
`
`the prior art[] and solves a technical problem using a technical solution.” § 42.301(b) (em-
`
`phasis added). First, no “technological feature” of the ’880 Patent beyond generic,
`
`conventional, and routine items is claimed. None of the four challenged claims of
`
`the ’880 Patent recites any specialized technological feature, but rather only generic
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`“modules” and “devices” incidental to “passing” value information, such as a “mone-
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` Covered Business Method Patent Review
`United States Patent No. 5,949,880
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`tary equivalent.” “Mere recitation of known technologies, such as computer hardware,
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`communication or computer networks, software, memory, computer-readable storage
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`medium, scanners, display devices or databases, or specialized machines, such as an
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`ATM or point of sale device,” or “[r]eciting the use of known prior art technology to
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`accomplish a process or method, even if that process or method is novel and non-
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`obvious” will “not typically render a patent a technological invention.” See, e.g., 77
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`Fed. Reg. 48,756 48,764 (Aug. 14, 2012); see also Liberty Mut. Ins. Co. v. Progressive Cas.
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`Ins. Co., CBM2012-00002, Paper 10 at 7-8 (P.T.A.B. Jan. 25, 2013).
`
`Claim 1 clearly involves no “technology” at all other than “module[s]” and “an
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`electronic device.” Although the claims recite “performing a mathematical calculation
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`on” and “storing” certain “value dat[a],” these steps call out no technology. None of
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`these limitations was novel at the time. The patent itself concedes that the technology
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`was well known and commonplace; e.g., a microprocessor based electronic device
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`could be “any of an unlimited number of devices” that were known in the art, listing a dozen
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`examples. Ex. 1001 at 2:35-45. As to the step of “storing” value data, the patent
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`notes many different forms of computer memory that were known at the time: “The
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`memory circuitry 20 may contain both read-only-memory and non-volatile random-
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`access-memory. Furthermore, one of ordinary skill in the art would understand that
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`volatile memory, EPROM, SRAM and a variety of other types of memory circuitry
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`United States Patent No. 5,949,880
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`might be used to create an equivalent device.” Id. at 4:66-5:4. Claims 3 and 4 depend
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`from claim 1 and recite, respectively, that the first or second “value datum is encrypt-
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`ed.” Again, the claims recite no technology to do so, and the specification itself concedes
`
`that encrypting data was already well known at the time, referring expressly to “RSA
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`encryption and decryption.” Id. at 4:61-65. See Decl. of Dr. Vijay K. Madisetti (Ex.
`
`1018) ¶¶ 44-52.
`
`The specification confirms that no particular “modules,” electronic devices, or
`
`communication systems are required by the claims:
`
`• “The microprocessor based device 104 can be any of an unlimited number
`of devices. For example, [it] could be a personal computer, an add-a-fare machine
`at a train or bus station (similar to those in today’s District of Columbia metro sta-
`tions), a turn style, a toll booth, a bank’s terminal, a ride at a carnival, a washing
`machine at a Laundromat, a locking device, a mail metering device or any device that
`controls access, or meters a monetary equivalent, etc.” Ex. 1001 at 2:37-45.
`• “[T]he means for communicating 106 is not limited to a single wire connection
`[but] could be multiple wires, a wireless communication system, infrared light, any
`electromagnetic means, a magnetic technique, or any other similar technique.” Id. at
`2:55-58.
`• “[A] variety of technologies can be used to interface the portable module 102 to an-
`other electronic device. . . . Thus, the interface circuit 214 can be a single wire,
`multiple wire, wireless, electromagnetic, magnetic, light or proximity, interface cir-
`cuit.” Id. at 4:14-24.
`The generic level at which this hardware is disclosed is illustrated in the Figure 1:
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`United States Patent No. 5,949,880
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`See Ex. 1018 ¶ 45. Applicants claimed that “there is a need for an electronic system
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`that allows a consumer to fill an electronic module with a cash equivalent in the same
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`way a consumer fills his wallet with cash.” Ex. 1001 at 1:52-54. But the patent as a
`
`whole solves no “technical problem” because there was no technical problem to begin with:
`
`those of ordinary skill certainly already knew how to transfer value data between two
`
`devices, perform arithmetic on that data, and store it in memory. See Ex. 1018 ¶ 51.
`
`
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`Nor can Maxim deny that the ’880 Patent is subject to a CBM proceeding after
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`having sued over 17 financial services entities and represented in multidistrict litigation in
`
`the Western District of Pennsylvania that defendants’ mobile and online banking ap-
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`plications infringe the ’880 Patent. See, e.g., Exs. 1006, 1009. As recently as August 29,
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`2013, Maxim told the Court that the ’880 Patent covers at least exchanges of digital
`
`cash and digital cash replenishment. See Ex. 1012 at 82, 84-85; see also Ex. 1009 at 4, 9.
`
`B. Related Matters; Petitioner Is a Real Party In Interest Sued for and
`Charged With Infringement
`
`In Case No. 2:12-mc-00244, In re Maxim Integrated Prods., Inc., MDL No. 2354
`
`(ECF No. 46), a multidistrict litigation (“MDL”) pending in the U.S. District Court
`
`for the Western District of Pennsylvania, Maxim asserts the ’880 Patent in counter-
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`claims against Petitioner. See Ex. 1005. Pursuant to Rule 42.8(b)(2), the ’880 Patent
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`has also been involved in the following litigations (as transferred for MDL purposes):
`
` PNC Fin. Servs. Grp., Inc. v. Maxim Integrated Prods., Inc., No. 2:12-cv-00089-JFC
` KeyCorp v. Maxim Integrated Prods., Inc., No. 2:12-cv-00860-JFC
` Vanguard Grp., Inc. v. Maxim Integrated Prods., Inc., No. 2:12-cv-00862-JFC
` Jack Henry & Assocs., Inc. v. Maxim Integrated Prods., No. 2:12-cv-00863-JFC
` Maxim Integrated Prods., Inc. v. Comerica Inc., No. 2:12-cv-00869-JFC
` Fidelity Brokerage Servs. LLC v. Maxim Integrated Prods., Inc., No. 2:12-cv-00871-JFC
` Maxim Integrated Prods., Inc. v. First United Bank & Trust Co., No. 2:12-cv-00876-JFC
` Maxim Integrated Prods., Inc. v. Starbucks Corp., No. 2:12-cv-00877-JFC
` Maxim Integrated Prods., Inc. v. Expedia, Inc., No. 2:12-cv-00878-JFC
` Maxim Integrated Prods., Inc. v. Capital One Fin. Corp., No. 2:12-cv-00879-JFC
` Maxim Integrated Prods., Inc. v. Bank of the West, No. 2:12-cv-00880-JFC
` Maxim Integrated Prods., Inc. v. Groupon, Inc., No. 2:12-cv-00881-JFC
` Maxim Integrated Prods., Inc. v. Union Bank, N.A., No. 2:12-cv-00882-JFC
` Maxim Integrated Prods., Inc. v. Southwest Airlines, Co., No. 2:12-cv-00883-JFC
` Chipotle Mexican Grill, Inc. v. Maxim Integrated Prods., Inc., No. 2:12-cv-00887-JFC
` Maxim Integrated Prods., Inc. v. QVC, Inc., No. 2:12-cv-00891-JFC
` Clairmail Inc. v. Maxim Integrated Prods., Inc., No. 2:12-cv-00923-NBF
` Branch Banking & Trust Co. v. Maxim Integrated Prods., Inc., No. 2:12-cv-00945-JFC
` BMO Harris Bank Nat’l Ass’n v. Maxim Integrated Prods., Inc., No. 2:12-cv-01538-JFC
` Deutsche Bank AG v. Maxim Integrated Prods., Inc., No. 2:12-cv-01604-JFC
` Maxim Integrated Prods., Inc. v. Citigroup, Inc., No. 2:12-cv-01628-JFC
` Maxim Integrated Prods., Inc. v. Target Corp., No. 2:12-cv-01629-JFC
` Maxim Integrated Prods., Inc. v. Wells Fargo & Co., No. 2:12-cv-01639-JFC
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` Maxim Integrated Prods., Inc. v. Bank of Am. Corp., No. 2:12-cv-01640-JFC
` Maxim Integrated Prods., Inc. v. JP Morgan Chase & Co., No. 2:12-cv-01641-JFC
` Maxim Integrated Prods., Inc. v. U.S. Bancorp, No. 2:12-cv-01642-JFC
` Maxim Integrated Prods., Inc. v. Walmart Stores, Inc., No. 2:12-cv-01643-JFC
`Other cases: Maxim Integrated Prods., Inc. v. Branch Banking & Trust Co, No. 2013-
`
`1495 (Fed. Cir.). Petitioner further identifies the following administrative matters and
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`related patents: U.S. Patent No. 5,940,510 (also asserted by Maxim in the MDL).2
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`III. OVERVIEW OF SPECIFIC GROUNDS FOR WHICH IT IS MORE
`LIKELY THAN NOT THAT THE CHALLENGED CLAIMS (1-4) OF
`THE ’880 PATENT ARE UNPATENTABLE
`
`Pursuant to § 42.208 (and § 42.300), Petitioner asserts that at least one—indeed,
`
`every one—of the challenged claims is invalid under 35 U.S.C. §§ 101 and/or 102.
`
`Sections V.B and V.C list each ground upon which it is more likely than not that the
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`challenged claims are unpatentable, and render a detailed explanation therefor.
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`IV. BACKGROUND INFORMATION FOR THE ’880 PATENT
`The two specific bases for invalidity presented in this Petition—(1) invalidity of
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`the challenged claims under § 101 as directed to patent-ineligible subject matter, and
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`(2) invalidity under § 102 as anticipated by two references never considered during
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`prosecution of the ’880 Patent.
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`2 U.S. Patents No. 6,105,013 and No. 6,237,095 name inventors common to the ’880
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`Patent, (Curry and Loomis), purport to incorporate by reference the priority applica-
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`tion for the ’880 Patent, and are also assigned to Maxim and asserted in the MDL.
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`The ’880 Patent and its Prosecution History
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`A.
`The ’880 Patent is the second of two patents claiming priority to a January 31,
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`1996 application (No. 08/594,975). The ’880 Patent’s parent application issued as U.S.
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`Patent No. 5,940,510 (the “’510 Patent”).
`
`1.
`Prosecution of the ’510 Patent commenced January 31, 1996, with originally-
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`File History of the Parent ’510 Patent
`
`filed claims directed to both systems and methods related to secure value transfer. Ex.
`
`1007 at 121-26. During prosecution, the Examiner entered a restriction, requiring
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`Applicants to elect either their system or method claims, and rejected the system
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`claims over certain prior art that did not include any of the references relied on in this
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`Petition. Id. at 170-71 (8/19/07 OA). Applicants elected their system claims, directed
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`to “system[s] for communicating data securely,” and made a series of amendments at-
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`tempting—without success—to overcome the Examiner’s prior art rejections. See id.
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`at 179 (11/26/97 Am. A), 186-92 (2/19/98 OA), 199-200 (6/11/98 Am. B), 213-18,
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`(8/10/98 OA). Applicants eventually cancelled all pending claims and added new,
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`entirely rewritten claims generally directed to “system[s] for communicating data se-
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`curely, comprising” “a first portable module,” “a portable module reader,” and “a se-
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`cure microcontroller based module.” Id. at 221-23 (11/9/98 Am. C). During prose-
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`cution, Applicants made clear that the claimed invention “allows a user to carry the
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`portable module and install digital money equivalents into the module and spend or
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`cash the portable digits at locations that have a portable module reader.” Id. at 224-25
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`(11/9/98 Am. C). The Examiner issued a Notice of Allowability, and the ’510 Patent
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`issued on August 17, 1999. Applicants requested a certificate of correction to fix an
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`error in the specification, which issued February 22, 2000. Id. at 28.
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`2.
`Prosecution of the ’880 Patent began on November 26, 1997. The ’880 Patent
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`File History of the ’880 Patent
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`issued from U.S. Application No. 08/978,798, which was filed as a continuation of
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`U.S. Application No. 08/594,975 with the unelected method claims that were subject
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`to the restriction requirement noted above. Applicants’ original application contained
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`21 claims, but Applicants cancelled pending claims 1-15 in a simultaneous preliminary
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`amendment. Ex. 1002 at 158. Applicants submitted an Information Disclosure
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`Statement (“IDS”), but with only five references (none relied on in this Petition). Id.
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`at 153. The sole remaining independent claim recited a method of “electronically
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`transferring units of exchange” between generic “modules” and “devices.”
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`On October 16, 1998, without any previous office action or rejection, the Ex-
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`aminer issued a Notice of Allowability for all pending claims. The Examiner provided
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`only a single statement regarding the substance of the claims in connection with two
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`prior art references (neither relied on in this Petition): “Neither Rosen (‘419) nor
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`Rosen (‘280) discloses passing said second value datum from said second module to
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`said electronic device; passing said second value datum from said electronic device to
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`said first module; and discontinuing communication between said first module and
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`said electronic device.” Id. at 165. (As detailed below, the prior art cited in this Peti-
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`tion clearly discloses each of these limitations.) The Examiner also entered a minor
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`amendment to pending claim 21 to note its dependency from pending claim 16, but
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`provided no other substantive analysis of the claims of the ’880 Patent, which issued
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`on September 7, 1999. Applicants requested a certificate of correction to fix various
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`errors in the specification, and a certificate issued on April 5, 2000. Id. at 181-85.
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`V. DETAILED EXPLANATION OF REASONS FOR RELIEF RE-
`QUESTED, SHOWING IT IS MORE LIKELY THAN NOT THAT
`AT LEAST ONE OF THE CHALLENGED CLAIMS IS UN-
`PATENTABLE
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`Pursuant to §§ 42.22 and 42.304(b), a full statement of the reasons for the relief
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`requested, including a detailed explanation of the evidence, including material facts,
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`and the governing law, rules, and precedent is provided below. Section V.A lists and
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`explains the bases for Petitioner’s relevant claim constructions, and Sections V.B and
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`V.C provide a detailed explanation for each ground for which it is more likely than
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`not that each challenged claim is invalid under §§ 101 and 102, respectively.
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`Claim Construction
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`A.
`Pursuant to § 42.300(b), solely for purposes of this review (and with exceptions
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`noted below), Petitioner interprets the terms of the challenged claims (including those
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`specifically noted below) in accordance with their plain and ordinary meaning under
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`the required broadest reasonable interpretation consistent with the specification of
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`the ’880 Patent. Petitioner submits the Madisetti Declaration in support of its claim
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`constructions. See Ex. 1018 ¶¶ 32-43. Petitioner reserves the right to argue (and is
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`arguing) in litigation narrower claim constructions as appropriate to that proceeding.
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`See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004); SAP,
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`CBM2012-00001, Paper 70 at 7-19 (P.T.A.B. June 11, 2013); MPEP § 2111.
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`In the concurrent MDL, the parties submitted Joint Disputed Claim Terms
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`Charts with disputed terms and constructions for challenged claims of the ’880 Patent
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`(Exs. 1008, 1014), and completed related briefing and expert discovery (Exs. 1009-13).
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`A hearing was held September 12, 2013, but the Court has not yet construed any
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`claims. Petitioner’s validity challenges in this Petition do not depend on the disputed
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`constructions because (1) the claims, however construed, are so impermissibly broad,
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`generic, and abstract as to be fatally deficient under § 101, and (2) the two cited prior
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`art references disclose the core claimed embodiments of the ’880 Patent, and claim
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`construction is not determinative of Petitioner’s § 102 invalidity challenges. Indeed,
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`even under Maxim’s litigation constructions, all challenged claims would be invalid.
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`Petitioner submits that the broadest reasonable interpretation of the claims in-
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`cludes the constructions set forth below:
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`●“electronically transferring units of exchange”—For review purposes, this
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`phrase is construed as “moving from a source to a recipient electronic data that repre-
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`sents money, credit, or other items and can be exchanged as payment for goods or
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`services.” Ex. 1018 ¶ 34. A POSITA would understand this phrase (found in claim
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`1’s preamble) to have this meaning in accordance with its plain and ordinary meaning
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`and Applicants’ statements in the specification, such as the Summary of Invention and
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`Abstract. Id.; Ex. 1001 at 1:60-2:6 (“The present invention is an apparatus, system
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`and method for communicating a cash equivalent electronically to and from a portable
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`module. . . .” (emphasis added)), 1:20-28, 1:30-58, 7:13-8:30, 8:31-9:16, Figs. 4, 5.
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`While Maxim argues in litigation that the preamble does not impose any limitations
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`(Ex. 1009 at 50-52), Petitioner submits that the broadest reasonable interpretation of
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`the claims requires that the preamble be construed as imposing limitations. Any in-
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`terpretation of the claims that does not involve electronic transfer of value that can be
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`exchanged for something ignores that the specification repeatedly and consistently de-
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`scribes the invention as involving transfer of digital money or an exchangeable value.
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`The preamble gives meaning to the limitations set forth in the lettered steps. Indeed,
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`claimed steps 1.a-c and e-h all refer back to the preamble when they use the term
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`“said . . . module.” This is a strong indication that the preamble is “necessary to give
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`life, meaning, and vitality to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
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`289 F.3d 801, 808 (Fed. Cir. 2002). In addition, the preamble illuminates that “pass-
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`ing . . . value datum” means “electronically transferring units of exchange” between
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`modules—not simply sending information about values. See Ex. 1001 at claim 1, 1:59-
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`2:5. The preamble also conveys that “a mathematical” calculation consists of the
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`basic arithmetic incident to “transferring units of exchange”—not any mathematical
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`calculation. See id. at 3:24-27 (“the microprocessor based device 104 can be informed
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`that units of exchange need to be added or subtracted from the portable module
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`102”). These preamble limitations are entirely consistent with the Summary of the
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`Invention, Figures, Abstract, and disclosed embodiments in the ’880 Patent. Without
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`the preamble’s requirement “for electronically transferring,” all the remaining claim
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`limitatio