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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`WALKER DIGITAL, L.L.C.
`Patent Owner
`
`U.S. Patent No. 5,884,272
`
`_____________________
`
`Covered Business Method Review Case No. Unassigned
`_____________________
`
`DECLARATION OF JAMES B. DUKE II
`
`
`
`
`
`1
`
`

`

`TABLE OF CONTENTS
`
`Overview ......................................................................................................... 5
`I.
`Background and Qualifications ...................................................................... 6
`II.
`III. List of Documents Considered ....................................................................... 9
`IV. Relevant Legal Standards ............................................................................. 10
`A.
`Patent Eligible Subject Matter .............................................................10
`B. Written Description .............................................................................11
`C. Ordinary Skill ......................................................................................11
`D. Anticipation .........................................................................................12
`E.
`Obviousness .........................................................................................12
`State of the Art .............................................................................................. 13
`V.
`VI. The ‘272 Patent ............................................................................................. 15
`F.
`The Claims ..........................................................................................15
`G.
`The Specification .................................................................................17
`H.
`Prosecution History .............................................................................19
`I.
`Claim Construction..............................................................................20
`VII. Analysis ........................................................................................................ 21
`A.
`Summary Chart of Analysis ................................................................21
`B.
`The ‘272 Patent is Incidental to Financial Services and Not
`Technological ......................................................................................22
`Patent Eligible Subject Matter .............................................................24
`1.
`The Method Claims Recite Abstract Mental Processes ........... 24
`2.
`No Meaningful Limitations Are Added in the System
`Claims ...................................................................................... 27
`References ...........................................................................................28
`Grounds ...............................................................................................31
`1.
`Silvermann ............................................................................... 31
`2.
`Silvermann in view of Rogaway .............................................. 41
`3.
`Silvermann in view of Clark .................................................... 44
`4.
`Silvermann in view of Shapira ................................................. 45
`5.
`Shapira...................................................................................... 46
`a)
`Claims 1 and 65 ............................................................. 47
`(1)
`“A method of facilitating an exchange of
`information between a first party and a
`second party” ........................................................47
`
`D.
`E.
`
`C.
`
`2
`
`

`

`(3)
`
`(4)
`
`(5)
`
`(6)
`
`(2)
`
`“receiving first party information data
`from said first party” ............................................48
`“storing said first party information data
`in a secure database” ............................................49
`“receiving, from said first party, at least
`one first party rule for releasing said first
`party information data” ........................................49
`“storing said at lease [sic] one first party
`rule” ......................................................................50
`“receiving, from said second party, a
`search request to the secure database,
`said search request comprising at least
`one search criterion to be satisfied” .....................50
`“determining second party data relevant
`to said at least one first party rule” .......................51
`“receiving, from said second party, at
`least one second party rule for releasing
`said second party data” .........................................51
`“processing said search request from said
`second party to determine if said first
`party information data satisfies said at
`least one search criterion” ....................................51
`(10) “if said first party information data
`satisfies said at least one search criterion,
`then communicating to said second party
`that said at least one search criterion has
`been satisfied” ......................................................51
`(11) “receiving a request from said second
`party for said first party information
`data” ......................................................................52
`(12) “determining, based on said second party
`data, whether said at least one first party
`rule has been satisfied” .........................................52
`(13) “if said at least one first party rule has
`been satisfied, providing, to said second
`party, said first party information data for
`which said at least one first party rule has
`been satisfied” ......................................................52
`Claim 9 ........................................................................... 53
`Claim 19 ......................................................................... 53
`
`(7)
`
`(8)
`
`(9)
`
`b)
`c)
`
`3
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`

`

`6.
`
`Claim 24 ......................................................................... 54
`d)
`Claim 31 ......................................................................... 54
`e)
`Claim 32 ......................................................................... 54
`f)
`Shapira in view of Rogaway .................................................... 55
`a)
`Claims 2 and 10 ............................................................. 55
`b)
`Claims 3 ......................................................................... 56
`c)
`Claims 4 and 11 ............................................................. 57
`Shapira in view of Baldwin ...................................................... 58
`a)
`Claim 27 ......................................................................... 59
`b)
`Claim 28 ......................................................................... 60
`Secondary Considerations of Nonobviousness ...................................60
`F.
`VIII. Conclusion .................................................................................................... 60
`
`7.
`
`4
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`

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`I, James B. Duke II, hereby declare as follows.
`
`I.
`
`Overview
`
`1.
`
`I am over the age of eighteen (18) and otherwise competent to make
`
`this declaration.
`
`2.
`
`I have been retained as an expert witness on behalf of GOOGLE INC.
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`for the above-captioned covered business method review.
`
`3.
`
`I am being compensated for my time in connection with this covered
`
`business method review at my standard consulting rate, which is $375 per hour.
`
`My compensation is not dependent on the substance of my opinions, my testimony
`
`or the outcome of this covered business method patent review.
`
`4.
`
`I understand that the petition for covered business method patent
`
`review involves U.S. Patent No. 5,884,272 (“the ‘272 patent”), GOOG 1001,
`
`which resulted from U.S. Application No. 08/708,968 (“the ‘968 application”),
`
`filed on September 6, 1996, naming Jay S. Walker, Bruce Schneier, and Scott Case
`
`as the inventors. The ‘272 patent issued on March 16, 1999, from the ‘968
`
`application. I further understand that, according to USPTO records, the ‘272 patent
`
`is currently assigned to Walker Digital, L.L.C. (“WD” or “Patent Owner”).1
`
`1 WD announced on September 18, 2013 that it has completed a merger with
`
`GlobalOptions Group Inc. to form a new entity called Patent Properties, Inc. and
`
`5
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`

`

`5.
`
`In preparing this Declaration, I have reviewed the ‘272 patent and
`
`considered each of the documents cited herein, in light of general knowledge in the
`
`art. In formulating my opinions, I have relied upon my experience in the relevant
`
`art. In formulating my opinions, I have also considered the viewpoint of a person
`
`of ordinary skill in the art prior to September 6, 1996, as defined below in Section
`
`IV.C. I am familiar with the level of a person of ordinary skill in the art with
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`respect to the technology at issue as of the filing date of the claimed priority date
`
`of September 6, 1996.
`
`II. Background and Qualifications
`6. I am an expert in the field of information technology applied in products
`
`and systems, and I have been an expert in this field since prior to 1996.
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`Throughout the remainder of this declaration, I will refer to the field of information
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`technology as the relevant field or the relevant art. In formulating my opinions, I
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`have relied upon my training, knowledge, and experience in the relevant art. A
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`copy of my current curriculum vitae is provided as GOOG 1003.
`
`7. As an expert in the field of information technology since prior to 1996, I
`
`am qualified to provide an opinion as to what a person of ordinary skill in the art
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`would have understood, known, or concluded as of 1996. Since 1985, I have
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`has or will transfer WD’s patent portfolio, including the ’272 patent, to this new
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`entity.
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`6
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`

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`accumulated significant training and experience in the information technology
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`industry. I have extensive knowledge and experience relating to techniques and
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`reasoning used in the field of information technology.
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`8. In regard to my educational background, I earned a B.S. in Computer
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`Science and Economics in 1985. In 1992, I earned an M.S. in Management from
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`the Massachusetts Institute of Technology (“MIT”) Sloan School of Management
`
`with concentrations in Information Technology and Operations Management.
`
`9. Currently, I am a management consultant and serve on the Board of
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`Advisors to three early stage software/managed services companies.
`
`10. I have worked in the information technology industry since 1985. I have
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`been professionally involved with information technology for more than 28 years.
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`Additionally, my experience includes management of systems that require the
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`safeguarding of confidential and/or sensitive information.
`
`11. During the period 1985 to 1990 I was a software developer for Travelers
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`Insurance Company. I worked on several projects during this time across several
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`technology platforms including mainframe computing, local area network/client-
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`server computing, and stand-alone personal computing. One of my roles was as a
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`programmer, lead developer, and eventual manager for a client-server based
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`property management system that embedded file compression technology to enable
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`secure, low-cost file transmissions and user communications.
`
`7
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`

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`12. During the period 1992 to 1995, I was an Engagement Manager at
`
`McKinsey & Co. I consulted on several engagement teams for clients in various
`
`industries. One of my projects was to redesign the core process of a large utility's
`
`energy business unit. I also worked as a team lead in redesigning a loan process
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`system for a large financial services company.
`
`13. From 1995 to 1999, I served as Group Vice President for First Citizens
`
`Bank. I was responsible for adoption and management of alternative delivery
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`channels such as internet, call center, and ATM systems. These systems permitted
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`remote customer access to confidential information.
`
`14. Between 1999 and 2000, I worked as Vice President of sales and
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`marketing for an internet start-up called NetOriginate.com. I employed leading-
`
`edge market research to obtain information relevant to the product development
`
`agenda.
`
`15. In 2000 and 2001, I served as Vice President and Chief Information
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`Officer for BuildNet, Inc., an e-commerce company. I designed and implemented
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`a new data center for a secure, scalable, highly-available telecommunications
`
`infrastructure. This included integration of the information systems with a secure
`
`wired/wireless network.
`
`16. From 2001 to 2011, I was Chief Operating Officer of another e-
`
`commerce company, SciQuest, Inc. SciQuest, Inc. is a “software as a service”
`
`8
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`

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`company specializing in business automation solutions. I led all customer
`
`operations and product development functions including product management,
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`development, professional services, customer support, and infrastructure. I
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`supported over 140,000 active users, processing billions of dollars' worth of
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`transactions annually.
`
`17. Furthermore, I have collaborated with or have communicated with many
`
`of the industry professionals in the field of information technology. Additional
`
`contributions of mine to the field are set forth in my current curriculum vitae
`
`(GOOG 1003). Accordingly, I am an expert in the field of information technology
`
`and I have been since prior to 1996.
`
`III. List of Documents Considered
`In formulating my opinion, I have considered the following:
`18.
`
`Description
`
`GOOG
`Exhibit #
`U.S. Patent No. 5,884,272 to Walker et al. (“the ‘272 patent”)
`1001
`1004 WIPO Publication No. WO 96/05563 A1 to Silverman et al.
`1005
`U.S. Patent No. 5,086,394 to Shapira
`1006
`U.S. Patent No. 5,491,749 to Rogaway
`1007
`Robert W. Baldwin and Wayne C. Gramlich, “Cryptographic Protocol
`for Trustable Match Making,” Massachusetts Institute of Technology,
`IEEE, 1985.
`1008 WALKER DIGITAL, LLC v. GOOGLE INC., Dkt # 231-
`Memorandum Opinion, Case No. 1:11-cv-00318-LPS before the U.S.
`District Court for the District of Delaware, July 25, 2013.
`
`9
`
`

`

`Description
`
`GOOG
`Exhibit #
`1009 WALKER DIGITAL, LLC v. GOOGLE INC., Dkt # 232- Order,
`Case No. 1:11-cv-00318-LPS before the U.S. District Court for the
`District of Delaware, July 25, 2013.
`1010 WALKER DIGITAL, LLC v. LINKEDIN CORPORATION,
`BUCKAROO ACQUISITION CORP., INC., AND GOOGLE INC.,
`Memorandum of Law in Support of Defendants Linkedin Corporation
`and Google Inc.’s Motion for Summary Judgment of Invalidity Based
`on Claiming Unpatentable Subject Matter, Case No. 11-318-LPS
`before the U.S. District Court for the District of Delaware, August 27,
`2012.
`Publicly Available File History of U.S. Patent No. 5,884,272
`(“original prosecution of the ‘272 patent”)
`U.S. Patent No. 5,1647,897 to Clark et al.
`
`1011
`
`1012
`
`
`IV. Relevant Legal Standards
`Patent Eligible Subject Matter
`A.
`19.
`
`I understand that the patent statute defines four categories of
`
`inventions that are eligible for protection: processes, machines, manufactures, and
`
`compositions of matter. I also understand that courts have created an exception and
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`found a process directed to an abstract idea with no practical application or which
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`preempts substantially all practical applications to be ineligible. I also understand
`
`that courts require that meaningful limitations beyond conventional or routine steps
`
`or components such as general purpose computer hardware be added to the abstract
`
`idea to avoid preempting all practical applications of the idea.
`
`10
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`

`

`B. Written Description
`I understand that a patent is invalid due to lack of written description
`20.
`
`when the specification of the patent does not provide sufficient support for the
`
`claims. To meet the written description requirement, the patent specification must
`
`adequately disclose the invention, which guarantees that the public receives the full
`
`benefit of the knowledge of the patent in exchange for the limited monopoly
`
`granted to the inventor. For that, the disclosure must reasonably convey to those
`
`skilled in the art that the inventor(s) had possession of the claimed subject matter
`
`as of the filing date. Hence, the specification must support the scope of the patent
`
`claims.
`
`C. Ordinary Skill
`I understand that a person of ordinary skill in the art is one who is
`21.
`
`presumed to be aware of all pertinent art, thinks along conventional wisdom in the
`
`art, and is a person of ordinary creativity. A person of ordinary skill in the art
`
`(“POSA”) would have had knowledge of the literature concerning anonymous
`
`information exchange. Considering these factors in the context of the claims of the
`
`‘272 patent, a POSA in the 1996 time frame would have had a Bachelor's degree in
`
`computer science with two years of work or research experience relating to secure
`
`data transmission.
`
`11
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`

`

`D. Anticipation
`It is my understanding that a claimed invention may be “anticipated”
`22.
`
`and thus unpatentable if a single prior art reference teaches each and every
`
`limitation recited in the claim.
`
`23.
`
`I understand that a claim is unpatentable if every element is actually
`
`disclosed in a prior art reference as recited in the claims. The disclosure may be
`
`explicit, implicit, or inherent. I understand that a reference is read from the
`
`perspective of a POSA at the time of the invention.
`
`E. Obviousness
`It is my understanding that a patent claim is obvious if the differences
`24.
`
`between the claimed subject matter and the prior art are such that the subject
`
`matter as a whole would have been obvious at the time the invention was made to a
`
`POSA to which said subject matter pertains. I understand that for a single reference
`
`or a combination of references to render the claimed invention unpatentable under
`
`an obviousness rationale, a person of ordinary skill in the art must have been able
`
`to arrive at the claims by altering or combining the applied references.
`
`25.
`
`I also understand that when considering the obviousness of a patent
`
`claim, one should consider whether a teaching, suggestion or motivation to
`
`combine the references exists so as to avoid impermissibly applying hindsight
`
`when considering the prior art. I understand this test should not be rigidly applied,
`
`12
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`

`

`but that the test can be important to avoiding such hindsight. I considered any
`
`available indicia of non-obviousness to the extent available in the public record.
`
`However, to my knowledge none have been made available.
`
`V.
`
`State of the Art
`
`26. The subject matter of the ‘272 patent was old and well-known in the
`
`art by September 1996. At a broad level, claim 1 of the ‘272 patent is directed
`
`toward matching of people based on user-provided criteria.
`
`27. At least as early as the 1980's, researchers had described computerized
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`matchmaking systems with a focus on personal privacy and information security.
`
`For example, by 1985, researchers at the Massachusetts Institute of Technology
`
`(MIT) had proposed a computerized matchmaking server for anonymous
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`employment searching. (GOOG 1007, p. 92.) The system as described would allow
`
`potential employees and employers to find each other without employees having to
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`announce their willingness to leave their current job, and without employers
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`having to announce the job opening. Id. The described server receives “wishes”
`
`from the users, and notifies them when a matching wish is found. (GOOG 1007, p.
`
`93.)
`
`28. By 1989, Shmuel Shapira had described a computerized matchmaking
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`system focused on facilitating introductions and dating. (GOOG 1005, Abstract.)
`
`Shapira's system allows people to enter information about themselves and their
`
`13
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`

`

`interests, and compares user data in order to find matches. Id. Shapira places
`
`particular emphasis on protecting user privacy by withholding full identification of
`
`the parties until the parties have communicated with each other with favorable
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`results. (GOOG 1005, 2:17-22.)
`
`29. By 1994, Reuters Limited described a matching system that allows
`
`finding parties to a potential trading transaction. (GOOG 1004, Abstract.) The
`
`system anonymously matches users and provides mechanisms for them to
`
`negotiate the terms of the transaction. Id. Users can enter desired parameters for
`
`the transaction, which the system uses to find a suitable match. (GOOG 1004, p.
`
`8.) Furthermore, the system allows the parties to exchange parameter and
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`negotiation information before revealing each other's identity. (GOOG 1004, p. 6.)
`
`30. The matching systems described by MIT, Shapira and Reuters, for
`
`example, were developed prior to the method and system described in the ‘272
`
`patent. The claims of the ‘272 patent are directed to a method and system for
`
`exchanging information between two parties. The method and system include:
`
`receiving data from first and second parties; receiving rules from the parties for
`
`releasing their data; receiving and processing a search request received from a
`
`party; if the search criteria is satisfied, exchanging data between the parties.
`
`31. The analysis below provides details to support the determination that
`
`the steps of the method and system claimed in the ‘272 patent were individually
`
`14
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`

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`and/or collectively known before the earliest possible priority date of the ‘272
`
`patent.
`
`VI. The ‘272 Patent
`I understand that this declaration is being submitted together with a
`32.
`
`petition for covered business method patent review of claims 1, 2, 3, 4, 9, 10, 11,
`
`19, 24, 27, 28, 31, 32, and 65 of the ‘272 patent.
`
`33.
`
`I have considered the disclosure of the ‘272 patent in light of the
`
`knowledge of a POSA as of September 6, 1996.
`
`34. The claims of the ‘272 patent are directed to matching two parties,
`
`and exchanging their information in accordance with rules provided by the parties.
`
`F.
`
`The Claims
`
`35. Claims 1 and 65 are independent claims drawn to a method and
`
`system, respectively. The only discernible difference between the claims is that
`
`system claim 65 recites a processor, a communication port, and a memory storing
`
`a secure database.
`
`36. Claims 1 and 65 both describe receiving information from each of two
`
`parties, receiving rules for releasing the information from the parties, searching
`
`for a party that matches a search criterion, and exchanging the information in
`
`accordance with the rules.
`
`15
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`

`

`37. Claim 2, which depends from claim 1, and claim 10, which depends
`
`from claim 9, are mirror claims of each other, directed to a first party and second
`
`party, respectively. Claims 2 and 10 both describe authenticating authorship of
`
`the party information.
`
`38. Claim 3 depends from claim 2, and recites that authenticating
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`authorship of the party information involves executing a cryptographic operation
`
`using a cryptographic key.
`
`39. Claim 4, which depends from claim 2, and claim 11, which depends
`
`from claim 10, are mirror claims of each other, directed to a first party and second
`
`party, respectively. Claims 4 and 11 both describe that authenticating authorship
`
`of the party information involves recognizing an identifier such as a password, a
`
`name or an identification number.
`
`40. Claim 9 depends from claim 1, and describes receiving rules for
`
`releasing party information from a second party.
`
`41. Claim 19 depends from claim 1, and describes receiving a rule from a
`
`first party specifying a second party to whom the system is authorized to release
`
`the first party’s information.
`
`42. Claim 24 depends from claim 1, and describes receiving a payment
`
`from a party for storing and providing the party’s information.
`
`16
`
`

`

`43. Claim 27 depends from claim 1, and recites that one party is a job
`
`candidate and the other is an employer.
`
`44. Claim 28 depends from claim 27, and recites that the job candidate’s
`
`information includes one of the following data about the candidate: identity,
`
`address, vital statistic, work experience, educational background, interest, résumé,
`
`list of at least one publication or list of at least one award.
`
`45. Claim 31 depends from claim 1, and recites that the parties are
`
`individuals seeking a personal relationship.
`
`46. Claim 32 depends from claim 1, and recites that the parties’
`
`information includes one of the following data about the party: identity, address,
`
`vital statistic, work experience, educational background or interest.
`
`G. The Specification
`
`47. The specification of the ‘272 patent describes a system that identifies
`
`parties having characteristics of interest to a requestor, and then releases certain
`
`information about the identified parties with authorization from the parties.
`
`(GOOG 1001, 6: 66-7:5.)
`
`48. The specification of the ‘272 patent describes the example of using
`
`the system in the job search context, but claims 1, 2, 3, 4, 9, 10, 11, 19, 24, 31, 32,
`
`and 65 are not limited to job searching. (GOOG 1001, 7:8-28.) The specification
`
`17
`
`

`

`states that the invention can be used in connection with other applications, such as
`
`matchmaking and dating services. (GOOG 1001, 7:23-28, 22:18-29.) The
`
`specification of the ‘272 patent describes using the system to find consultants,
`
`auditioning actors or performers, finding a partner with whom to merge, as well as
`
`other commerce or finance based applications. (GOOG 1001, 23:2-8.) The
`
`specification of the ‘272 patent also describes using the system to facilitate the
`
`negotiation between two parties who desire to negotiate an agreement. (GOOG
`
`1001, 23:60-62.)
`
`49. The specification of the ‘272 patent describes that an “authorization
`
`profile” includes a list of rules for releasing party data. The rules can include a list
`
`of companies to which a party's data should not be released, or characteristics
`
`about a company to which the party data can be released. (GOOG 1001, 8:63-9:3.)
`
`50. The specification of the ‘272 patent describes the example of an
`
`employer party that can search for job candidates, and if the characteristics of the
`
`employer party match the characteristics that were provided by the job candidate,
`
`the job candidate's data may be released to the employer. (GOOG 1001, 9:40-54).
`
`51. The specification of the ‘272 patent describes that the number of
`
`parties matching a search criterion along with a pseudonym may be provided.
`
`(GOOG 1001, 16:64-17:4).
`
`18
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`

`

`Prosecution History
`
`H.
`52. The patent application was filed on September 6, 1996, with 76 total
`
`claims, 8 of which were independent.
`
`53. A Preliminary Amendment was filed on February 24, 1998, which
`
`amended claims 1, 3, 6, 8, 9, 13-18, 20, 21, 23-31, 39, 41, 44, 47, 51-56, 58, 59,
`
`and 61-69, added new claims 77-89, and cancelled claims 2, 10-12, 19, 32-38, 40,
`
`48-50, 57, and 70-76.
`
`54. An Office Action rejecting all claims as being obvious was mailed on
`
`June 18, 1998. A set of rejections was made against different groupings of claims
`
`based on the prior art of Fraser (US Patent No. 5,664,115), Cicciarelli (US Patent
`
`No. 4,870,591), Matyas (US Patent No. 4,218,738), and Silverman (US Patent No.
`
`5,077,665).
`
`55. An examiner interview was conducted on September 23, 1998.
`
`56. An amendment responsive to the April 15, 1998 Office Action was
`
`filed on October 7, 1998. This amendment also included revisions to the
`
`specification text.
`
`57.
`
` A subsequent examiner interview was conducted on October 8, 1998,
`
`during which it was agreed that a terminal disclaimer was necessary to overcome a
`
`double patenting rejection.
`
`19
`
`

`

`58. On November 13, 1998, a notice of allowance was issued. The notice
`
`of allowance did not include any particular reasons or rationale for allowance.
`
`Prosecution claims 1, 3, 6, 8, 9, 13-18, 20, 21, 23-31, 39, 41, 44, 47, 51-56, 58, 59,
`
`61-69 and 77-89 were renumbered as issued claims 1-65.
`
`59. On Mar. 16, 1999, U.S. Pat. No. 5,884,272 was granted.
`
`
`
`I.
`60.
`
`Claim Construction
`
`I understand that the challenged claims must be given their broadest
`
`reasonable interpretations (“BRI”) in light of the specification of the ‘272 patent,
`
`which means that the words of the claims should be given their broadest possible
`
`meaning consistent with the specification of the ‘272 patent.
`
`61. The term “rule” in the originally-filed specification of the ‘272 patent
`
`is only used with reference to a set of criteria found in an authorization profile
`
`field. Under the broadest reasonable interpretation, and consistent with the
`
`specification, the term “rule” would have been understood by a POSA to mean
`
`“one or more criteria.” (GOOG 1001, 8:63-9:3.) Accordingly, a POSA would have
`
`interpreted the phrase “party rule for releasing party data” as “one or more criteria
`
`for releasing party or requestor data.”
`
`62. The phrase “rule specifying at least one second party” would have
`
`been understood by a POSA to mean “a rule specifying characteristics of certain
`
`20
`
`

`

`parties.” The specification of the ‘272 patent describes that rules can specify
`
`characteristics of companies to which the party’s data can be released. (GOOG
`
`1001, 8:-63-9:3.) Under the broadest reasonable interpretation, a POSA would
`
`have understood that specifying characteristics of a party is a way to specify a
`
`second party.
`
`VII. Analysis
`Summary Chart of Analysis
`A.
`Ground
`1
`
`Claims
`1, 2, 3, 4, 9, 10, 11, 19, 24, 27, 28, 31, 32,
`and 65
`
`Basis
`§101
`
`References
`N/A
`
`2
`3
`
`4
`
`5
`
`6
`7
`
`8
`
`
`
`§102(a)
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§103(a)
`§103(a)
`
`§103(a)
`
`Silvermann
`Silvermann
`in view of
`Rogaway
`Silvermann
`in view of
`Clark
`Silvermann
`in view of
`Shapira
`Shapira
`Shapira in
`view of
`Rogaway
`Shapira in
`view of
`Baldwin
`
`1, 9, 19, and 65
`
`2, 3, 4, 10, and 11
`
`27 and 28
`
`31 and 32
`1, 9, 19, 24, 31, 32, and 65
`
`2, 3, 4, 10, and 11
`
`27 and 28
`
`21
`
`

`

`B.
`
`The ‘272 Patent is Incidental to Financial Services and Not
`Technological
`
`63. The Background of the ‘272 patent describes earlier well-known
`
`needs for anonymous communications in “everyday situations,” such as police hot
`
`lines, witness protection, adoptions, and Catholic confessionals (GOOG 1001, col.
`
`1, ln. 38-col. 2, ln. 3.) To help shield identity, intermediaries like search firms in
`
`an employment context and matchmakers in a dating context were often used and
`
`were well known. (GOOG 1001, col. 3, lns. 25-54.) To overcome the supposed
`
`downside of these approaches, the ‘272 patent purports to make a contribution by
`
`allowing parties a controlled release of more information through anonymous
`
`communication. (GOOG 1001, col. 4, lns. 19-27.)
`
`64. The ‘272 patent describes its field of invention as relating to
`
`“establishing anonymous communications between two or more parties.” (GOOG
`
`1001, col. 1, lns. 9-11.) The purported invention is said to relate to “controlling the
`
`release of confidential or sensitive information of at least one of the parties in
`
`anonymous communications.” (GOOG 1001, col. 1, lns. 11-13.) As described in
`
`the Summary of the Invention, the “invention establishes a communication channel
`
`between a party and requestor while not necessarily revealing the identity of the
`
`party and/or the requestor to each other.” (GOOG 1001, col. 4, lns. 28-32.)
`
`65.
`
`It is of note that the independent claims of the ‘272 patent do not
`
`require anonymous communication. Nonetheless, the ‘272 patent's purported
`
`22
`
`

`

`contribution to provide controlled release of information between anonymous
`
`parties is not technological in nature. Even though the release of information in an
`
`example may be from a database and can occur over a communication channel in
`
`the ‘272 patent, the database and communication channel are nothing more than a
`
`conventional database and a conventional communication channel from the 1996
`
`time frame combined in a conventional manner. (GOOG 1001, 8:52-56; 11:14-
`
`16.) A POSA would not have considered the ‘272 patent and its purported
`
`invention to be technological.
`
`66. The specification also notes that the alleged invention providing for
`
`this controlled released of information can be applied to a number of services.
`
`Specific services include employment search, dating services, auditions, and
`
`“[o]ther applications includ[ing]… seeking a merger partner, and engaging in
`
`various commerce-based applications in which controlled anonymity by any party
`
`would be beneficial.” (GOOG 1001, 23:3-8). A POSA would have understood
`
`these services that even call out “seeking a merger partner” and “commerce-based
`
`appl