UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`PLAID TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`YODLEE, INC.
`Patent Owner
`_________________________
`Case No. CBM2016-______
`U.S. Patent No. 6,317,783
`_________________________
`
`DECLARATION OF TODD C. MOWRY IN SUPPORT OF PETITION FOR
`COVERED BUSINESS METHOD REVIEW OF U.S. PATENT NO. 6,317,783
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Plaid Technolgies Inc.
`Exhibit 1002
`
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`PLAID TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`YODLEE, INC.
`Patent Owner
`_________________________
`Case No. CBM2016-______
`U.S. Patent No. 6,317,783
`_________________________
`
`DECLARATION OF TODD C. MOWRY IN SUPPORT OF PETITION FOR
`COVERED BUSINESS METHOD REVIEW OF U.S. PATENT NO. 6,317,783
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Plaid Technolgies Inc.
`Exhibit 1002
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION AND QUALIFICATIONS ........................................... 1
`I.
`PROFESSIONAL QUALIFICATIONS ...................................................... 1
`II.
`III. LEVEL OF ORDINARY SKILL IN THE ART ........................................ 5
`IV. APPLICABLE LEGAL STANDARD ......................................................... 7
`A. Claim Construction................................................................................ 7
`B. Eligibility ............................................................................................... 7
`V. OVERVIEW OF THE ACCUSED TECHNOLOGY ................................ 8
`VI. THE ’783 PATENT .....................................................................................12
`A. Description of the ’783 Patent .............................................................12
`B. Prosecution History .............................................................................17
`VII. CLAIM CONSTRUCTION ........................................................................20
`VIII. CLAIMS 1–36 ARE DIRECTED TO AN ABSTRACT IDEA
`AND LACK AN INVENTIVE CONCEPT ...............................................27
`A. Claims 1–36 Are Directed to an Abstract Idea ...................................27
`B. Claims 1–36 Lack an Inventive Concept ............................................30
`C. Alternative CashEdge and Block Financial Claim
`Constructions .......................................................................................37
`IX. CONCLUSION ............................................................................................40
`
`
`i
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`
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`
`1.
`
`I have been retained on behalf of the Petitioner, Plaid Technologies,
`
`Inc., to provide this Declaration concerning technical subject matter relevant to the
`
`post-grant review of a covered business method patent, 6,317,783 (“the ’783
`
`Patent,” Ex. 1001).
`
`2.
`
`I am over 18 years of age. I have personal knowledge of the facts
`
`stated in this Declaration and could testify competently to them if asked to do so.
`
`II.
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`PROFESSIONAL QUALIFICATIONS
`
`3.
`
`I am a Professor in the Department of Computer Science at Carnegie
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`Mellon University. I also have a courtesy appointment in the Department of
`
`Electrical and Computer Engineering. I have served on the faculty of Carnegie
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`Mellon University for nineteen (19) years starting in 1997 through the present
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`(2016).
`
`4.
`
`I also served on the faculty of the University of Toronto for four (4)
`
`years between 1993 and 1997, in the Department of Electrical and Computer
`
`Engineering, and with a courtesy appointment in the Department of Computer
`
`Science. Prior to that appointment, I served as a Graduate Research Assistant in
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`the Department of Electrical Engineering at Stanford University for four (4) years
`
`between 1989 and 1993.
`
`5.
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`As a faculty member, I have taught and continue to teach courses and
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`1
`
`
`
`
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`directed research in computer systems and software, operating systems, distributed
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`and network systems, object-oriented programming and design, and mobile
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`computing.
`
`6.
`
`I received a B.S. degree in Electrical Engineering with Highest
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`Distinction from the University of Virginia in May 1988. I received an M.S. in
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`Electrical Engineering from Stanford University in June 1989, and a Ph.D. in
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`Electrical Engineering from Stanford University in March 1994.
`
`7.
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`I have worked in the computer industry in various capacities. I was a
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`part-time Computer Architect and then a Computer Architecture Consultant at
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`Silicon Graphics, Inc. in Mountain View, California (formerly MIPS Computer
`
`Systems in Sunnyvale, California) from 1989 to 1993 and 1993 to 1996,
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`respectively. I was a Visiting Scientist at IBM in Toronto from 1996 to 2004.
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`During that same time period (1996 to 2004), I was also a Member of the
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`Technical Advisory Board of SandCraft, Inc. in Santa Clara, California. I was the
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`Director of the Intel Research Pittsburgh Lab at Intel Corporation in Pittsburgh,
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`Pennsylvania from 2004 to 2007.
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`8.
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`I have authored 19 journal articles and 55 conference papers. I am
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`also an inventor on five patents.
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`9.
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`I have published a number of papers in the top research conferences in
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`the fields of operating systems and data storage and retrieval (including the paper
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`2
`
`
`
`
`
`that won the Best Paper Award at the USENIX 2nd Symposium on Operating
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`Systems Design and Implementation (OSDI ’96)). I have also been an active
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`member of the Parallel Data Lab at Carnegie Mellon University since 1997,
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`described as “academia’s premiere storage systems research center.”1
`
`10.
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`I am the recipient of several honors and awards: the Arthur Samuel
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`Thesis Award (awarded by the Stanford Computer Science department to the top
`
`two Ph.D. theses in a given year), several IBM Faculty Development Awards
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`(1996, 1997, 1998, 2000, 2001, 2002, and 2003), several Best Paper Awards (the
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`Second Symposium on Operating Systems Design and Implementation in 1996;
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`the 20th International Conference on Data Engineering (ICDE) in 2004), the
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`Alfred P. Sloan Research Fellowship (awarded to researchers in recognition of
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`distinguished performance and a unique potential to make substantial contributions
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`to their field), the Most Thought-Provoking Idea Award (awarded by the
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`Architectural Support for Programming Languages and Operating Systems
`
`(ASPLOS), in 2004), and the TR100 Award (awarded by MIT’s Technology
`
`Review magazine to the top 100 most promising young innovators in science and
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`technology, in 1999).
`
`11.
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`I am a member of the Institute of Electrical and Electronics Engineers
`
`
`1 See the Parallel Data Lab website at http://www.pdl.cmu.edu/.
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`3
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`
`
`
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`(IEEE) and the Association of Computing Machinery (ACM). I am the Editor-in-
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`Chief of ACM Transactions on Computer Systems (since 2013), which is the
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`premier journal for computer systems research. I was an Associate Editor for the
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`journal prior to that, beginning in 2001. I was the Program Chair of the
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`International Conference on Architectural Support for Programming Languages
`
`and Operating Systems (ASPLOS) in 2010. I was the Co-Program Chair of the
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`International Conference on Parallel Architectures and Compilation Techniques
`
`(PACT) in 2001. I have been on the programming committee in various years for
`
`ASPLOS, the International Symposium on Computer Architecture (ISCA), the
`
`International Symposium on Microarchitectures, and
`
`the Workshop on
`
`Architectural and System Support for Improving Format.
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`12. Overall, I have over twenty-three (23) years of experience in the field
`
`of computer science and, specifically, computer architecture, compiler
`
`optimizations, operating systems, and parallel processing. A copy of my
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`curriculum vitae, including references to the publications I authored, is attached to
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`this Declaration as Appendix A.
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`13.
`
`In light of the foregoing, I consider myself to be an expert in the field
`
`of computer science, and believe that I am qualified to provide an opinion as to
`
`what a person of ordinary skill in the art would have understood, known, or
`
`concluded regarding the subject matter of the ’783 Patent at the time of its alleged
`
`4
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`
`
`
`
`invention.
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`14.
`
`I am being compensated for the time I have spent on this action at my
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`customary rate of $600 per hour, plus reimbursement for expenses. My
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`compensation does not depend in any way upon the opinions or testimony that I
`
`provide or the outcome of this action.
`
`15. My opinions expressed herein are based on review and analysis of
`
`certain information obtained in connection with my work on this matter, together
`
`with my training, education, and experience. The opinions expressed herein are
`
`my own.
`
`16.
`
`In my analysis, I considered the ’783 Patent and its file history, as
`
`well as the prior art and other documentation discussed below.
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`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`17. Throughout
`
`this Declaration, I consider
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`the
`
`issues from
`
`the
`
`perspective of a person having ordinary skill in the art in or around October 1998,
`
`the earliest date to which the ’783 Patent could claim priority.
`
`18. The ’783 Patent is titled “Apparatus and methods for automated
`
`aggregation and delivery of and transactions involving electronic personal
`
`information or data” and describes a process for automated aggregation, retrieval
`
`and delivery of personal information. Generally categorized, the ’783 Patent deals
`
`with methods for logging into websites and gathering personal data from them.
`
`5
`
`
`
`
`
`19.
`
`In determining the characteristics of a hypothetical person of ordinary
`
`skill in the art around October 1998 for the technology described in the ’783
`
`Patent, I considered a number of factors, including how web-based information
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`retrieval systems were designed and implemented at and before that time, the
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`nature of problems encountered in this field, and the pace at which innovations
`
`were made at that time. I also considered the educational background and
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`experience of those actively working in the field.
`
`20.
`
`It is my opinion that for the purposes of the ’783 Patent, a person of
`
`ordinary skill in the art, at the time the patent was filed, would be one having a
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`Bachelor’s Degree in electrical engineering, computer science, or a related
`
`scientific field, and some work experience in the computer science field, which
`
`could include programming experience. Alternatively, a person of ordinary skill in
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`the art would possess a combination of education and experience in certain
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`relevant fields of computer science, such as graphical user interface design, and
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`knowledge of software design, data structures, operating systems, archiving
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`systems, and client-server computing. I recognize that someone with less technical
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`education but more practical experience, or more technical education but less
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`practical experience, could also have been considered a personal of ordinary skill
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`in the art.
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`6
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`
`
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`IV. APPLICABLE LEGAL STANDARD
`
`A. Claim Construction
`
`21.
`
`I have been informed by counsel and therefore understand that the
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`first step in determining the validity of an asserted claim is for the claim to be
`
`properly construed.
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`22.
`
`I understand that in proceedings before the Board, patent claims are to
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`be given their broadest reasonable interpretation, consistent with the teachings of
`
`the specification and file history.
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`23.
`
`I have reviewed Petitioner’s proposed constructions as explicitly
`
`identified in the Petition, and I agree that those constructions reflect the broadest
`
`reasonable interpretation of those claims. I understand that the Board has not yet
`
`construed the terms in this proceeding, and I reserve the right to supplement this
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`Declaration based on alternative constructions proposed by the Patent Owner and
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`the constructions adopted by the Board to the extent that these constructions differ
`
`from those proposed by Petitioner.
`
`B.
`
`24.
`
`Eligibility
`
`I understand that patent claims must be directed to patent-eligible
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`subject matter under 35 U.S.C. § 101. I am informed that determining patent
`
`eligibility is a two-step process. I understand the first step is determining whether
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`patent claims are directed to a patent-ineligible concept, such as laws of nature,
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`7
`
`
`
`
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`natural phenomena, and abstract ideas. I understand that a claim is not patent-
`
`eligible merely because it uses technical language and language from the art.
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`Rather, subject matter is patent-eligible if the claims, properly construed,
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`incorporate enough meaningful limitations to ensure that what is claimed is more
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`than just an abstract idea.
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`25.
`
`I understand that if the claims are in fact directed to an abstract idea,
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`then the second step in determining patent eligibility is to ask whether the claims
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`do significantly more than describe that abstract idea. I am informed that a claim
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`that recites an abstract idea must contain an inventive concept to transform the
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`abstract idea into patent-eligible subject matter. It is my understanding that
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`appending conventional steps specified at a high level of generality is not enough
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`to supply an inventive concept, nor does limiting the use of an abstract idea to a
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`particular technological environment, such as a generic computer, alter this
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`analysis. I am also informed that a computer’s basic functions, such as electronic
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`recordkeeping, obtaining data, adjusting account balances, and issuing automated
`
`instructions, cannot provide the inventive concept.
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`V. OVERVIEW OF THE ACCUSED TECHNOLOGY
`
`26. By the early-to-mid 1990s, computers had started to become
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`household items, and the world saw an explosion of content become available to
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`individuals using the World Wide Web. As people’s connectivity increased, so too
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`8
`
`
`
`
`
`did their ability to “access various types of information, disseminate information,
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`and be exposed to electronic commerce activities, all with a great degree of
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`freedom.” U.S. Patent No. 6,401,118 (“Thomas”) (Ex. 1008) at 1:18–29.
`
`27. While the proliferation of web-based content increased access to
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`information, it also brought with it the problem of finding efficient, user-friendly
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`methods for accessing that data. General purpose computers were being
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`programmed to collect data from the Web and aggregate the collected data. As a
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`result, software solutions that provided for the collection and delivery of data on
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`the Web had become well known to those of ordinary skill in the art before
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`October 1998.
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`28.
`
`In one example, in describing the state of the art, the specification of
`
`the ’783 Patent explains that “the portal strategy was successfully adopted as an
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`efficient way for consumers to easily access a variety of content sources in a
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`single, easy to use format.” ’783 Patent at 1:50–53. However, “[a]s the volume of
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`available online content continues to grow exponentially, portals are now
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`confronted with the need to make different types of content available to different
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`consumers based upon their particular preferences and tastes.” Id. at 1:53–57.
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`“Acquiring online [personal information]” from websites using a computer was
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`already well known in the art, as the ’783 Patent admits. See id. at 2:3–4, Figs. 1,
`
`4. Portal sites, such as Yahoo and Excite, were already able to “aggregate”
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`9
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`
`
`
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`personal information. Id. at 2:42–63.
`
`29.
`
`In another example, U.S. Patent No. 6,278,449 (“Sugiarto”) (Ex.
`
`1004) describes a system that “collect[s] information from various web pages from
`
`the worldwide web internet, configure[s] this various information in accordance
`
`with a predefined user configuration file, defined by a particular user, and
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`transmit[s] the configured various information to a highly portable internet access
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`device.” Sugiarto, Ex. 1004, at 2:10–17. Sugiarto teaches a system that provides a
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`user with a customized Web page that includes data sourced from one or more
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`Web sites of the user’s choosing, e.g., CNN, ESPN, and/or Nasdaq. Id. at 4:36–53.
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`30. As new aggregation and delivery services developed, those of
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`ordinary skill in the art further recognized that much of the personal information
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`available on the Web is protected by well-known computer techniques like
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`requiring the provision of credentials (username and password) —a process often
`
`called authentication. In order to automate and streamline this process, skilled
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`artisans developed simulated web clients that imitated the user providing his or her
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`credentials. Just as personal information at a bank is often protected by requiring
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`the user to show credentials, online personal information is protected. To retrieve
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`personal information from places where authentication was required, the idea of a
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`proxy or agent in the real world was applied so that the computer acted as a proxy
`
`or agent for the user by providing the user’s credentials on his or her behalf.
`
`10
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`
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`31.
`
`In one example, U.S. Patent No. 5,892,905 (“Brandt”) (Ex. 1005)
`
`describes “the capability to easily access many different application programs over
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`the WWW via a standardized [graphical user interface].” Brandt, Ex. 1005, at
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`3:57–60. In Brandt, an application (also called a “gateway”) accesses a user
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`library to obtain authentication data needed to access software applications for the
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`user. Id. at 12:15–17. The application then logs the user onto a requested service
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`using normal security procedures. Id. at 12:15–28.
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`32. Using some sort of verification or access, such as a log in or
`
`password, and even automating that process, was extremely well known in the art.
`
`For example, U.S. Patent No. 6,006,333 (“Nielsen”) (Ex. 1006) discloses a
`
`password helper that automatically presents stored passwords to access a plurality
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`of remote servers by employing a master password. E.g., Nielsen, Ex. 1006, at
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`[57]; 1:12–16 (“Many remotely accessible computer systems require user
`
`authentication. The user, presumably operating a client system, must be registered
`
`with the remote system and must type in his or her user ID and a password for that
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`remote system every time it is accessed”); 1:31–52, 4:9–25, 4:54-56, Figs. 2–4.
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`33. Likewise, in 1998, end users often could not determine if server
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`information changed given the Web’s client-server model. U.S. Patent No.
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`6,029,175 (“Chow”) (Ex. 1007) sought to address this problem within the existing
`
`client-server architecture, disclosing a software agent, termed a “Revision
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`11
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`
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`Manager” to monitor content at a server. Chow, Ex. 1007, at 3:60–64. The
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`Revision Manager accepts user input indicating the user’s interest in monitoring a
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`document. Id. at 5:32–34. In response, the Revision Manager “spontaneously
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`monitors the server to notice if the document has been modified.” Id. at 6:2–4.
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`Other references at the time also disclosed methods for computers that perform
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`online monitoring activities. Thomas, Ex. 1008 at [57], 2:36–51. Thus,
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`monitoring for changes was also well known in the art.
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`34. Systems and methods for data aggregation and storage underwent
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`significant developments during this time period. Thus, those of skill in the art
`
`would have been aware of the teachings of the above disclosures.
`
`VI. THE ’783 PATENT
`
`A. Description of the ’783 Patent
`
`35. The ’783 Patent relates to “an apparatus and process for automated
`
`aggregation and delivery of electronic personal information or data (PI)” and
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`“automation of transactions involving electronic PI.” ’783 Patent at 1:23–26, as
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`shown in Figure 2 (below). The “present invention” is facilitating the “end user
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`access of, manipulation of and transactions involving electronic PI” such as “stock
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`portfolio, local weather, sports scores, bank account balances or other pertinent
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`information or data” and “a variety of electronic transactions involving PI such as
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`stock trading, retail purchases, bill payment, bank account fund transfers or other
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`12
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`
`
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`transactions.” Id. at 3:5–9, 15–19.
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`36. Personal information is “all of the data that companies, information
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`providers, have that is specific or unique to each person such as monthly bills,
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`bank account balances, investments information, health care benefits, email, voice
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`and fax messages, 401(k) holdings or potentially any other information pertinent to
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`a particular end user.” Id. at 4:12–21, 4:65–67.
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`37. A number of sources for this information are discussed in the
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`specification, including various websites for “Banking & Investments,” “Phone
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`Bill[s],” “Power Bill[s],” “Cable Bill[s],” “Health and Employee Benefits,” “Credit
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`Cards & Mortgages,” “Communications & Messages (Email, Fax, Voice),” and
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`other portal generic content. See id. at 2:31–34, Fig. 4; see also id. Fig. 5.
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`38. The specification of the ’783 Patent discloses a system for delivering
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`personal information wherein the system includes “a user store including end user
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`data, a provider store including information provider data, a personal information
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`store including personal information and a processor that communicates with these
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`data stores.” Id. at 3:20–24. The processor “retrieve[s] personal information for
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`the selected end user from the connected information providers.” Id. at 3:28–31.
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`39. Figure 2, reproduced below, provides a visual of the basic components
`
`used to implement the alleged invention:
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`13
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`
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`Id., Fig. 2. According to the specification, an end user 210 accesses a client
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`computer 220 that connects to the Internet 230 to access a PI engine 240 running
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`on a PI host 290. Id. at 4:29–34. The ’783 Patent further discloses that client
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`software 270 “could be a general Web browser such as Navigator or
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`Communicator (Netscape).” Id. at 4:29–34, 4:39–46.
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`40. The PI engine 240 (shown in Fig. 3 below) running on PI host 290
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`examines stored PI 280 and refreshes it by directly reacquiring the PI from the
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`particular information provider’s Web site 250 running on the provider’s computer
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`system 260. Id. at 4:33–39. For example, “the end user’s checking account
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`balance would be updated through his bank’s Web site” and “his portfolio
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`14
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`
`
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`information from his broker’s site and his electricity bill from his electricity
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`company’s site.” Id. at 4:47–51. PI engine 240 accesses multiple provider web
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`sites for a single end user. Id., Fig. 5; id. at 4:60–62, 6:55–67. The components of
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`the PI engine are illustrated in more detail in Figure 3:
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`
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`Id., Fig. 3; see id. at 4:52–5:8.
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`41. The PI Engine includes a “PI access/transact component,” which
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`“supports the update, acquisition and transaction functionality of the PI engine.”
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`Id. at 9:30–32. “For each piece of PI requiring access or update,” the PI
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`access/transact component “looks up the access procedure and information needed
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`for the particular personal information in the Provider store” as well as
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`“verification and access data,” which is found in the user store. Id. at 9:38–41. “A
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`15
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`
`
`
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`simulated Web client could perform access or transaction processes automatically
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`supplying access and verification data as necessary.” Id. at 9:59–61.
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`42. The PI engine 240 also stores the aggregated personal information in
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`its store 280 and delivers the PI to a selected destination, for example across the
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`Internet 230 to the client computer 220 which displays the information to the end
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`user 210 using the client software 270. Id. at 4:39–46.
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`43.
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`“The present invention also contemplates indirect access of PI by the
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`end user utilizing a Web site as an intermediary.” Id. at 9:15–21. The ’783 Patent
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`further discloses delivery of “an access point directly to the provider’s page
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`supplying that PI. The access point may take the form of a link, a form button or
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`some other interactive access mechanism.” Id. at 14:24–67. A “novel transaction
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`model” is also disclosed, using that “intermediary website,” that allows the PI
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`engine administrator to levy a fee, which “subsidizes” or “fully compensates” the
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`“PI engine administrator for services provided.” Id. at 14:3–15, Fig. 11. That
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`“fee”—which can be “per user,” “per transaction,” or “per access”—is “directly
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`charged” or “debited from a minimum monthly fee.” Id. at 14:3–24.
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`44.
`
`In addition, the ’783 Patent describes “automated or semi-automated
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`account management by providing trigger events to automatically initiate a
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`transaction.” Id. at 16:8–10; see id. at 16:11–24 (adding automation of
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`“payments,” notification of bills due, and notification of payments), 16:31–38,
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`16
`
`
`
`
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`Figs. 2–3. The PI access/transaction component 340 in Figure 3 uses “standard e-
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`commerce bill-paying methods to pay the user’s bill/s to the provider if he/she
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`chooses.” Id. at 16:25–31.
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`45. A person of ordinary skill in the art at the relevant time would have
`
`appreciated that the end user in the ’783 Patent is a specific natural person because
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`the end user is the operator of desktop computer 220. To access his or her PI, an
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`end user may be required to “login” to the system, i.e., request access to his or her
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`PI. Id. at 7:16–18, 10:30–44 (“[T]he act of logging into the system by an end user
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`effectively selects that end user for immediate PI update.”). Moreover, the PI that
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`is aggregated and sent to the end user is “specific to the end user requiring identity
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`verification for access.” Id. at 4:22–26.
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`46. At bottom, the ’783 Patent is directed toward retrieving and storing
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`personal information from multiple sources and executing a transaction that is
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`financial in nature based on that information.
`
`B.
`
`47.
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`Prosecution History
`
`I understand that Application No. 09/428,511 (“the ’511 Application”)
`
`was filed on October 27, 1999 with claims 1–28. Ex. 1003, ’783 Patent File
`
`History at 32. I also understand that the ’511 Application claimed the benefit of
`
`Provisional Application Nos. 60/105,917 and 60/134,395, filed October 28, 1998
`
`and May 17, 1999, respectively. Id. at 35.
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`17
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`
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`48.
`
`I understand that, during prosecution of the ’511 Application, the
`
`USPTO issued an Office Action in October 2000 in the ’511 Application, rejecting
`
`all of pending claims 1–28. Id. at 148. Specifically, claims 1–28 were rejected
`
`under nonstatutory, obviousness-type double patenting over
`
`then-pending
`
`Application No. 09/427,602 (“the ’602 Application”) and under 35 U.S.C. § 103(a)
`
`as being obvious over U.S. Patent No. 5,995,965 (“Experton”), in view of U.S.
`
`Patent No. 5,862,325 (“Reed”). Id. at 149–53.
`
`49.
`
`I understand that the Applicant filed a Reply to the Office Action,
`
`which included a Terminal Disclaimer over the ’602 Application to overcome the
`
`double patenting rejection, and added claims 29–36. Id. at 168. The Reply also
`
`included amendments to then-pending independent claims 1, 14, and 27 to
`
`overcome the obviousness rejection. For example, the Applicant amended
`
`independent claim 14 (which was renumbered as claim 1 in the ’783 Patent) as
`
`follows:
`
`14. (Once amended) A method for delivering non-public personal
`information relating to an end user via a computer network to [at least
`one] an end user from at least one of a plurality of information providers
`securely storing the personal information, the method comprising the
`steps of:
`(a) the processor connecting with at least one information provider;
`(b) for a selected end user, the processor retrieving personal information for
`the selected end user from the connected at least one information
`
`18
`
`
`
`
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`provider based on end user data associated with the selected end user and
`information provider data associated with the connected one or more
`information providers,
`the end user data
`including
`information
`identifying the plurality of information providers securely storing the
`personal information relating to the end user, the provider data including
`a protocol for instructing the processor how to access the securely stored
`personal information via the network, the information accessible to the
`processor using the protocol also being accessible by the end user via the
`network independently of the system for delivering personal information;
`and
`(c) the processor storing the retrieved personal information in a personal
`information store for access by the selected end user.
`Id. at 164–65.
`
`50.
`
`I understand that the Applicant amended then-pending independent
`
`claims 1 and 27 in a similar manner. Id. at 164–66. Moreover, in its Remarks, the
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`Applicant argued that, as amended, then-pending claims 1, 14, and 27 were
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`patentable over Experton and Reed because, “[i]n Applicant’s invention, the
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`information providers are those that an end user could alternatively choose to
`
`access in a conventional manner, i.e., independently of using the inventive
`
`system. . . . Neither Experton nor Reed addresses the issue of making access to
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`multiple ones of such personal information providers more convenient by
`
`obviating a user contacting each provider individually.” Id. at 169 (italics
`
`removed). Thereafter, the Examiner allowed the ’511 Application, concluding that
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`19
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`
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`
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`prior art of record did not disclose or render obvious “an end user data including
`
`identifying the plurality of information providers securely storing the personal
`
`information relating to the end user, the provider data including a protocol for
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`instructing the processor how to access
`
`the securely stored personal
`
`information.” Id. at 175 (emphases in the original). But as described below, the
`
`concept that the Examiner found to be novel and non-obvious—automatic
`
`authentication and gathering—was well known by the priority date of the ’783
`
`Patent.
`
`VII. CLAIM CONSTRUCTION
`
`51.
`
`I understand that for purposes of this covered business method review
`
`proceeding, in comparing the claim language to the prior art, I am to construe that
`
`claim language as a person of ordinary skill in the art at the time of the alleged
`
`invention would do in light of the specification. I also understand that in
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`proceedings before the Board, patent claims are to be given their broadest
`
`reasonable interpretation, consistent with the teachings of the specification and file
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`history.
`
`52.
`
`I have reviewed the claim constructions explicitly set forth in the
`
`Petition from that perspective and, in my opinion, believe the constructions are
`
`consistent with the broadest reasonable interpretations in light of the specification.
`
`At this time, I have no opinion as to whether these constructions would be the
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`20
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`
`
`
`
`proper constructions for any district court litigation involving the ’783 Patent.
`
`53. Moreover, for terms where a district court has adopted a different
`
`construction—for example in the Plaid Claim Construction (Ex. 1012), the
`
`CashEdge Claim Construction (Ex. 1009), or the Block Financial Claim
`
`Construction (Ex. 1010)—than that put forth by Petitioner, it is my opinion that the
`
`proposed ground of invalidity renders the claims not eligible for patenting under
`
`any of those constructions.
`
`54. To one of skill in the art at the time of the alleged invention, under the
`
`broadest reasonable interpretation standard, the term “non-public personal
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`information” is primarily directed to financial information and covers “information
`
`that is personal to a specific end user, such as monthly bills, bank account
`
`balances, investments information, health care benefits, email, voice and fax
`
`messages, and 401(k) holdings or potentially any other information pertinent to a
`
`particular end user” that is secured by websites that require user log on (e.g., with a
`
`user name and password). See ’783 Patent at 4:12–21, 4:65–67; see also id. at
`
`2:58–63 (“stock portfolio or bank balance”); 4:47–51 (“checking account balance,”
`
`“portfolio information,” and “electricity bill”); see id. at 2:31–34, Figs. 4, 5; Ex.
`
`1003 at 168 (Applicant’s description of “non-public personal information” in the
`
`file history of the ’783 Patent ). “Non-public personal information” also includes
`
`“stock portfolio, local weather, sports scores.” Id. at 3:4–8. This construction is
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`21
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`
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`consistent with the specification, the file history of the ’783 Patent, and the Block
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`Financial and CashEdge Claim Constructions, as laid out in the Petition. See Ex.
`
`1009, CashEdge Claim Construction at 15 (“[I]nformation that is personal to a
`
`specific end user and not accessible to the general public”); Ex. 1010, Block
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`Financial Claim Construction at 6–7 (“Information/data that is specific to an end
`
`user and requires verification and access data for retrieval.”).
`
`55. To one of skill i
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