IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COMPASS BANK, AMERICAN EXPRESS COMPANY, AMERICAN
`EXPRESS TRAVEL RELATED SERVICES COMPANY, INC., DISCOVER
`FINANCIAL SERVICES, DISCOVER BANK, DISCOVER PRODUCTS INC.,
`NAVY FEDERAL CREDIT UNION, AND STATE FARM MUTUAL
`AUTOMOBILE INSURANCE COMPANY1
`Petitioner,
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.
`Patent Owner.
`
`Case No. CBM2015-00102
`Patent No. 6,237,095
`
`Petitioners’ Reply to Patent Owner’s Preliminary Response
`
`1 On June 26, 2015, the Board granted a joint motion filed by Maxim and Navy
`
`Federal Credit Union (“NFCU”) to terminate the proceeding with respect to NFCU
`
`pursuant to 35 U.S.C. § 327(a). Paper 10.
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COMPASS BANK, AMERICAN EXPRESS COMPANY, AMERICAN
`EXPRESS TRAVEL RELATED SERVICES COMPANY, INC., DISCOVER
`FINANCIAL SERVICES, DISCOVER BANK, DISCOVER PRODUCTS INC.,
`NAVY FEDERAL CREDIT UNION, AND STATE FARM MUTUAL
`AUTOMOBILE INSURANCE COMPANY1
`Petitioner,
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.
`Patent Owner.
`
`Case No. CBM2015-00102
`Patent No. 6,237,095
`
`Petitioners’ Reply to Patent Owner’s Preliminary Response
`
`1 On June 26, 2015, the Board granted a joint motion filed by Maxim and Navy
`
`Federal Credit Union (“NFCU”) to terminate the proceeding with respect to NFCU
`
`pursuant to 35 U.S.C. § 327(a). Paper 10.
`
`
`
`TABLE OF CONTENTS
`
`CBM2015-00102
`Patent 6,237,095
`
`PAGES
`
`I.
`II.
`
`III.
`
`IV.
`
`V.
`
`B.
`
`INTRODUCTION..................................................................................................... 1
`DISCLAIMER OF CLAIM 7 HAS NO AFFECT ON THE CBMR
`ELIGIBILITY OF THE REMAINING CLAIMS............................................... 2
`Despite the disclaimer, the subject matter of claim 7 remains
`A.
`illustrative of the financial nature of its parent claim.............................. 2
`The disclaimer does not affect the Petition’s independent showing
`that the remaining claims cover a financial product or service. ............ 3
`PATENT OWNER’S OTHER ARGUMENTS DO NOT SHOW THE
`’095 PATENT TO BE INELIGIBLE FOR CBMR. ........................................... 6
`Google, Salesforce.com, J.P. Morgan II, and Sony do not control
`A.
`the outcome here. ........................................................................................... 6
`Title 37 C.F.R. § 42.207(e) and Federal Circuit cases cited in
`Google do not prohibit considering the subject matter of
`disclaimed claims........................................................................................... 7
`PATENT OWNER’S CIVIL SUITS ADMIT THAT THE ’095 PATENT
`CLAIMS A FINANCIAL PRODUCT OR SERVICE..................................... 10
`CONCLUSION........................................................................................................ 10
`
`B.
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`CBM2015-00102
`Patent 6,237,095
`
`PAGE(S)
`
`CASES
`Allergen Sales LLC v. Sandoz, Inc.,
`2013 WL 4854786 (E.D. Tex. Sep. 5, 2013).......................................................3,9
`Bank of the West v. Secure Axcess LLC,
`CBM2015-00009, Paper 21 (PTAB April 13, 2015)........................................5, 10
`Genetics Institute, LLC v. Novartis Vaccines & Diagnostics, Inc.,
`655 F.3d 1291 (Fed. Cir. 2011) ..............................................................................9
`Google, Inc. v. SimpleAir, Inc.,
`CBM2015-00019, Paper 11 (PTAB May 19, 2015)...................................... 6, 7, 8
`Guinn v. Kopf, 96 F.3d 1419 (Fed. Cir. 1996)...........................................................9
`Informatica Corp. v. Protegrity Corp.,
`CBM2015-00021, Paper 14 (PTAB June 1, 2015).................................................5
`J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC,
`CBM2014-00157, Paper 11 (PTAB Feb. 18, 2015) (“J.P. Morgan I”) ....... 2, 3, 9
`J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC,
`CBM2014-00157, Paper 8 (PTAB Jan. 14, 2015)..................................................2
`J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC,
`CBM2014-00160, Paper 11 (PTAB Jan. 29, 2015) (“J.P. Morgan II”)................6
`Motorola Mobility LLC, v. Intellectual Ventures I LLC,
`CBM2015-00005, Paper 10 (PTAB March 27, 2015)............................................5
`Salesforce.com, Inc. v. Applications in Internet Time LLC,
`CBM2014-00162, Paper 11, at 10 (PTAB Feb. 2, 2015). ..................................6, 7
`Sony Corp. of America v. Network-1 Technologies, Inc.,
`CBM2015-00078, Paper 7 (PTAB Jul. 1, 2015) ....................................................6
`Vectra Fitness, Inc. v. TWNK Corp.,
`162 F.3d 1379 (Fed. Cir. 1998) ..........................................................................3, 8
`STATUTES
`America Invents Act of 2011 § 18(d)(1) ...............................................................2, 3
`
`ii
`
`
`
`OTHER AUTHORITIES
`37 C.F.R. § 42.207(e).............................................................................................7, 9
`37 C.F.R. § 42.300(a).................................................................................................7
`
`CBM2015-00102
`Patent 6,237,095
`
`iii
`
`
`
`CBM2015-00102
`Patent 6,237,095
`
`I.
`
`INTRODUCTION
`Patent Owner’s disclaimer2 of dependent claim 7 does not render the
`
`remaining claims ineligible for covered business method review (“CBMR”). The
`
`Petition shows the claims of the ’095 Patent qualify for CBMR because the
`
`apparatus recited in the claims enables “‘money and other valuable data [to] be
`
`securely passed electronically.’” Petition at 13 (quoting Ex. 1001, Abstract). While
`
`Patent Owner’s disclaimer renders dependent claim 7 unenforceable, it cannot
`
`erase the subject matter of dependent claim 7, which remains illustrative of the
`
`financial nature of non-disclaimed independent claim 1. As the Petition explains,
`
`claim 1 covers an apparatus comprising data for monetary amounts even without
`
`dependent claim 7; namely, claim 1’s “first data object” and “second data object,”
`
`which each cover monetary amounts as described in the specification. See id. The
`
`disclaimer does not wipe out the financial embodiments covered by the non-
`
`disclaimed claims, as shown in the Petition at pp. 13-14. Nor does the disclaimer
`
`prevent the Board from also considering the 30-plus lawsuits asserting non-
`
`disclaimed claims against financial products and services in determining CBMR
`
`eligibility.
`
`2 This Reply is limited to the disclaimer issue pursuant to Board correspondence.
`
`Petitioners also oppose the other arguments in the Preliminary Response.
`
`1
`
`
`
`CBM2015-00102
`Patent 6,237,095
`DISCLAIMER OF CLAIM 7 HAS NO AFFECT ON THE CBMR
`ELIGIBILITY OF THE REMAINING CLAIMS.
`
`II.
`
`Dependent claim 7 has been disclaimed and can no longer be enforced, but
`
`the financial subject matter of this claim remains part of the ‘095 Patent and is
`
`illustrative of the financial nature of the non-disclaimed claims. The ’095 Patent is
`
`CBMR eligible because its remaining claims cover “a financial product or
`
`service.” See AIA § 18(d)(1).
`
`A.
`
`Despite the disclaimer, the subject matter of claim 7 remains
`illustrative of the financial nature of its parent claim.
`
`The Board considered and rejected the argument Patent Owner now makes –
`
`that the subject matter claimed by a disclaimed dependent claim is not relevant to
`
`determining whether the corresponding parent, independent claim is CBMR
`
`eligible – in J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC, CBM2014-
`
`00157, Paper 11, at 2 (PTAB Feb. 18, 2015) (hereinafter “J.P. Morgan I”).
`
`In J.P. Morgan I, the petition argued that dependent claim 12, which
`
`depended from independent claim 1, conferred CBMR eligibility. Id., Paper 8, at
`
`11-14 (PTAB Jan. 14, 2015). The Board agreed and instituted CBMR based solely
`
`on dependent claim 12. Id. Patent owner scrambled to disclaim dependent claim 12
`
`to avoid CBMR eligibility. See id., Paper 11, at 2. Even though claim 12 was the
`
`sole basis for CBMR standing, the Board found disclaimer would not have
`
`removed CBMR standing for the remaining claims; “standing for [CBMR] remains
`
`at least because disclaimer of claim 12 does not change the scope of independent
`
`2
`
`
`
`CBM2015-00102
`Patent 6,237,095
`
`claim 1, from which it depends.” Id. at 3.
`
`Case law underscores the soundness of the Board’s J.P. Morgan I decision.
`
`In Allergen Sales LLC v. Sandoz, Inc., 2013 WL 4854786 (E.D. Tex. Sep. 5, 2013),
`
`the district court relied on – and found that the public is entitled to rely on – subject
`
`matter of disclaimed dependent claims (in this case, as reflected in the prosecution
`
`history) in determining the scope of the independent claim. See id., at *4, *6 (citing
`
`Vectra Fitness, Inc. v. TWNK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998)).
`
`Similarly here, the Board should rely on the financial nature of claim 7 to
`
`inform its determination of the CBMR eligibility of independent claim 1. See id. at
`
`*4, *6. Patent Owner’s disclaimer cannot revoke CBMR standing because the
`
`disclaimed claim’s subject matter remains illustrative of the financial nature of
`
`claim 1. See J.P. Morgan I, CBM2014-00157, Paper 11, at 3; AIA § 18(d)(1).
`
`B.
`
`The disclaimer does not affect the Petition’s independent showing
`that the remaining claims cover a financial product or service.
`
`Patent Owner argues, “Petitioner’s standing arguments relying on the
`
`specification were all made in support of standing based on claim 7.” Response at
`
`22. For reasons previously explained in Section II.A above, this argument is
`
`misleading, and based on a misapprehension of the impact of a dependent claim on
`
`its parent independent claim. Nevertheless, and contrary to Patent Owner’s
`
`argument, the Petition demonstrates that other claims are directed to a financial
`
`product or service by tying specific terms in independent claim 1 to portions of the
`
`3
`
`
`
`CBM2015-00102
`Patent 6,237,095
`specification that confirm the “invention” claimed in the ’095 Patent is for
`
`transferring “money” and can also “authorize monetary transactions.”
`
`The Petition shows that the terms “first data object” and “second data
`
`object” recited as part of claim 1’s “apparatus” cover a financial product or service.
`
`Petition at 12-14. The Petition further explains that although the financial subject
`
`matter of now-disclaimed dependent claim 7 alone is dispositive, “an examination
`
`of the specification of the 095 Patent confirms that the claimed invention is
`
`directed to the practice of a financial product or service.” Petition at 13.3 The
`
`Petition – in reference to all of the claims – quotes the patent abstract’s statement
`
`that “the present invention relates to an electronic module [i.e., “apparatus”] . . .
`
`capable of passing encrypted information. . . via a secure, encrypted technique so
`
`that money and other valuable data can be securely passed electronically.” Id.
`
`(emphasis, alterations modified). The Petition also points out the apparatus will
`
`“authorize monetary transactions” and identifies several digital-cash applications
`
`for it (e.g., “digital cash” dispenser, replenishment, and transfer). Id. at 13-14.
`
`Claim 1’s recited “first data object” and “second data object” store the money /
`
`valuable data as discussed in the digital-cash application embodiments. Id.; E.g.,
`
`Ex. 1001, 8:8-19, 9:21-24, 9:36-38, 9:52-67, 10:28-37, 10:57-58, 11:13-40.
`
`Because the ’095 Patent claims embodiments for transferring money or
`
`3 All emphasis in quotations added unless otherwise noted.
`
`4
`
`
`
`CBM2015-00102
`Patent 6,237,095
`authorizing financial transactions, it could not be clearer that it is CBMR eligible.
`
`The Board has instituted CBMRs where petitions have similarly linked
`
`claim terms to financial embodiments in the specification. For example, in
`
`Informatica Corp. v. Protegrity Corp, the Board rejected the patent owner’s
`
`argument that the petition “does not cite to ‘any single word in any single claim’
`
`that is directed to a financial product or service” (emphasis in original). CBM2015-
`
`00021, Paper 14, at 11 (June 1, 2015). The Board instituted a CBMR based on the
`
`petition’s citation to claim language (i.e., “protection attribute/attributes” of a
`
`database) and a description in the specification showing that claim language
`
`encompassed a financial embodiment (i.e., “protection attributes” are used to
`
`protect banking databases in the specification). Id.
`
`Similarly in Motorola Mobility LLC, v. Intellectual Ventures I LLC, the
`
`Board rejected patent owner’s argument that the claimed software update methods
`
`“can be applied to any type of computer software related to any industry.” The
`
`Board granted CBMR institution because “[t]he Specification . . . contemplates the
`
`use of the claimed methods in operations that are at least incidental or
`
`complementary to . . . a financial product or service.” CBM2015-00005, Paper 10,
`
`at 7-8 (PTAB March 27, 2015). In Bank of the West v. Secure Axcess LLC, the
`
`petitioner argued “the patent specification includes discussions of financial
`
`services using the claimed systems and processes,” and the Board instituted CBMR
`
`5
`
`
`
`CBM2015-00102
`Patent 6,237,095
`over patent owner’s arguments that the claims are usable in business generally and
`
`that “the claim language is devoid of any financial or monetary terms.” CBM2015-
`
`00009, Paper 21, at 12 (PTAB April 13, 2015).
`
`Consistent with these Board decisions, the Petition here showed that the
`
`“first data object,” “second data object,” and “apparatus” language in claim 1
`
`covers financial or banking embodiments. Petition at 12-14. Patent Owner’s
`
`disclaimer does not eliminate CMBR standing for the non-disclaimed claims.
`
`III. PATENT OWNER’S OTHER ARGUMENTS DO NOT SHOW THE
`’095 PATENT TO BE INELIGIBLE FOR CBMR.
`Google, Salesforce.com, J.P. Morgan II, and Sony do not control
`A.
`the outcome here.
`
`The decisions Patent Owner relies upon as “illustrative” are not at all like the
`
`present case. The Board in Google, Inc. v. SimpleAir, Inc. found the claims
`
`ineligible for CBMR because “[p]etitioner [] provide[d] no analysis of the
`
`language of claim 1 or explanation as to why the particular language of claim 1
`
`recites . . . a financial product or service.” CBM2015-00019, Paper 11, at 11
`
`(PTAB May 19, 2015). Salesforce.com, Inc. v. Applications in Internet Time LLC
`
`denied CBMR eligibility for the same reasons. CBM2014-00162, Paper 11, at 10
`
`(PTAB Feb. 2, 2015). The patent specifications at issue in J.P. Morgan Chase &
`
`Co. v. Intellectual Ventures II LLC, CBM2014-00160, Paper 11, at 11-12 (PTAB
`
`Jan. 29, 2015) (“J.P. Morgan II”) and Sony Corp. of America v. Network-1
`
`Technologies, Inc., CBM2015-00078, Paper 7 at 9-10 (PTAB Jul. 1, 2015) never
`
`6
`
`
`
`CBM2015-00102
`Patent 6,237,095
`
`tied the claims to a financial product or service.
`
`In contrast, and as explained in Section II.B above, the Petition here
`
`specifically explained that, in addition to the now-disclaimed claims, “the claims,
`
`the specification, and the patent owner’s litigation history all show the ‘095 Patent
`
`is directed to a financial product or service.” Petition at 12; supra Section II.B
`
`(describing Petition’s analysis of terms in claim 1). Unlike in Google,
`
`Salesforce.com, J.P. Morgan II, and Sony, the Petition here demonstrates that all
`
`the claims cover financial embodiments. Indeed, the Petition here pointed out that
`
`the “invention” of the ‘095 Patent is for transferring “money” or “authoriz[ing]
`
`monetary transactions.” Petition at 13.
`
`B.
`
`Title 37 C.F.R. § 42.207(e) and Federal Circuit cases cited in
`Google do not prohibit considering the subject matter of
`disclaimed claims.
`
`Patent Owner incorrectly contends that 37 C.F.R. § 42.207(e) and three
`
`Federal Circuit cases cited by the Board in Google stand for the proposition that
`
`disclaimed claims cannot be a basis for CBMR standing. The statement “[n]o post-
`
`grant review will be instituted based on disclaimed claims” in 37 C.F.R. §
`
`42.207(e)4 simply means the Board will not institute CBMR of disclaimed claims.
`
`See, e.g., Google, CBM2015-00019, Paper 11, at 2; Salesforce.com, CBM2014-
`
`00162, Paper 11 at 2. However, nothing prohibits the Board from considering the
`
`4 Section 42.207(e) also applies to CBMR. See 37 C.F.R. § 42.300(a).
`
`7
`
`
`
`CBM2015-00102
`Patent 6,237,095
`subject matter of the disclaimed claims to determine CMBR eligibility of other
`
`non-disclaimed claims. Indeed, the Board in Google did not ignore the subject
`
`matter of a disclaimed dependent claim when determining whether the
`
`corresponding independent claim could support CBMR standing. See Google,
`
`CBM2015-00019, Paper 11, at 10-14. Google found the independent claim merely
`
`recited “generic, context-neutral data” after considering and finding insufficient for
`
`CBMR eligibility the specification’s non-limiting examples of “data” as including
`
`“stock quotes, weather, lotto,” and then separately considered a disclaimed
`
`dependent claim, which further limited the claimed “data” to “news, sports,
`
`financial markets, weather.” Id. at 12, 14.
`
`Google cited three Federal Circuit cases for the proposition that a disclaimed
`
`claim is treated as though it never existed and found that a disclaimed claim
`
`standing alone cannot confer CBMR standing. See id., at 14. However, treating a
`
`dependent claim as though it never existed does not mean the Board should also
`
`disregard the subject matter of the dependent claim when evaluating CBMR
`
`eligibility of any remaining claims. Moreover, the Federal Circuit cases discuss the
`
`impact of a statutory disclaimer in reissue and interference proceedings and have
`
`limited relevance here in a CBMR context.
`
`In Vectra Fitness, the court found disclaimed claims no longer part of the
`
`“original patent” in a reissue proceeding to prevent patent owner from recapturing
`
`8
`
`
`
`CBM2015-00102
`Patent 6,237,095
`disclaimed subject matter via reissue. 162 F.3d at 1383-84. More tellingly, the
`
`court still considered the disclaimed claims when determining the breadth of the
`
`remaining claims, see id. at 1384; Allergen Sales, 2013 WL 4854786, at *6 (citing
`
`Vectra Fitness for this proposition). In Guinn v. Kopf, the court viewed the
`
`disclaimed claims as if they “never existed” in an interference to ensure the
`
`interfering patent could not exclude others from the disclaimed subject matter. 96
`
`F.3d 1419, 1422 (Fed. Cir. 1996). The court in Genetics Institute, LLC v. Novartis
`
`Vaccines & Diagnostics, Inc. determined that a disclaimed claim alone cannot
`
`support jurisdiction in a district court interference proceeding because the
`
`disclaimed claim is treated as if it “never existed.” 655 F.3d 1291, 1299-1300 (Fed.
`
`Cir. 2011). None of these cases hold that the subject matter of a disclaimed claim
`
`cannot be considered in relation to the remaining claims. The merely stand for the
`
`unremarkable proposition that disclaimed claims are not “reexamined,” which is
`
`the same rule at 37 C.F.R. § 42.207(e).
`
`But none of these cases support what Patent Owner urges–that the Board
`
`should entirely ignore the subject matter of disclaimed claims. The subject matter
`
`of disclaimed dependent claim 7, illustrative of the financial nature of its parent
`
`claim 1, remains part of the ’095 Patent’s record and demonstrates CBMR
`
`eligibility. See, e.g., J.P. Morgan I, CBM2014-00157, Paper 11, at 2; Allergen
`
`Sales, 2013 WL 4854786, at *6.
`
`9
`
`
`
`CBM2015-00102
`Patent 6,237,095
`PATENT OWNER’S CIVIL SUITS ADMIT THAT THE ’095
`PATENT CLAIMS A FINANCIAL PRODUCT OR SERVICE.
`
`IV.
`
`As discussed in the Petition at p. 14, Patent Owner’s assertion of the ’095
`
`Patent against the financial products and services of over 30 financial institutions,
`
`banks, and retailers is a factor the Board may weigh in favor of finding CBMR
`
`standing. See Bank of the West, CBM2015-00009, Paper 21, at 13. Significantly,
`
`Patent Owner admits in these complaints that the claims of the ’095 Patent are
`
`directed to financial products and services. The allegation against Petitioner
`
`Compass is typical: “[w]hen … [the Compass Mobile Banking smartphone]
`
`applications are installed on a portable computing device, such as Android or
`
`iOS™ devices, the resulting systems are made and/or used, thereby infringing . . .
`
`one or more claims of the ’095 Patent.” Ex. 1018, First Amended Complaint in
`
`Patent Owner v. Petitioner Compass, at ¶32. Indeed, Patent Owner’s litigation
`
`allegations show that, in addition to independent claim 1, Patent Owner believes
`
`that at least the (remaining) dependent claims of the ’095 Patent—claims 2-6 and
`
`8—likewise are directed to financial products and services.
`
`V.
`
`CONCLUSION
`
`For the foregoing reasons and those stated in the Petition, Petitioners
`
`respectfully request institution of trial for all remaining claims.
`
`Date: July 29, 2015
`
`Respectfully submitted,
`/William F. Long/
`William F. Long, Reg. No. 51,967
`Dentons US LLP
`
`10
`
`
`
`CBM2015-00102
`Patent 6,237,095
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §§ 42.6(e)(1) and 42.205, I hereby certify that on this
`
`29th day of July, 2015,
`
`the foregoing Reply to Patent Owner’s Preliminary
`
`Response was served via electronic mail, pursuant to the parties’ May 29, 2015
`
`electronic service agreement.
`
`The names and addresses of the parties being served are as follows:
`
`Kenneth Weatherwax
`weatherwax@lowensteinweatherwax.com
`
`Parham Hendifar
`hendifar@lowensteinweatherwax.com
`
`Date: July 29, 2015
`
`ATLANTA 5659516.2
`
`Respectfully submitted,
`
`/William F. Long/
`
`11
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