UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`United Services Automobile Association,
`Petitioner,
`v.
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`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
`Patent Owner
`______________________
`
`Case CBM2016-00063
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`Patent 8,266,432
`______________________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`United Services Automobile Association,
`Petitioner,
`v.
`
`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
`Patent Owner
`______________________
`
`Case CBM2016-00063
`
`Patent 8,266,432
`______________________
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`
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`CBM2016-00063
`Patent 8,266,432
`Attorney Docket No. 36137-0007CP1
`EXHIBITS
`
`USAA-1001
`
`USAA-1002
`
`U.S. Patent No. 8,266,432 to Asghari-Kamrani et al. (“the ‘432
`Patent” or “‘432”)
`
`Excerpts from the Prosecution History of the ‘432 Patent (“the
`Prosecution History”)
`
`USAA-1003
`
`Declaration of Dr. Seth Nielson re the ‘432 Patent (“Nielson”)
`
`USAA-1004
`
`Curriculum Vitae of Dr. Seth Nielson
`
`USAA-1005
`
`U.S. Patent No. 7,356,837 (“the ‘837 Patent” or “‘837”)
`
`USAA-1006
`
`Transitional Program for Covered Business Method Patents—
`Definitions of Covered Business Method Patent and
`Technological Invention, 77 Fed. Reg. 157 (August14, 2012)
`
`USAA-1007
`
`A Guide to the Legislative History of the America Invents Act;
`Part II of II, 21 Fed. Cir. Bar J. No. 4
`
`USAA-1008
`
`RESERVED
`
`USAA-1009
`
`PNC Bank v. Secure Axcess, LLC, CBM2014-00100 Paper 10
`(entered September 9, 2014)
`
`USAA-1010
`
`RESERVED
`
`USAA-1011
`
`RESERVED
`
`USAA-1012
`
`RESERVED
`
`USAA-1013
`
`U.S. Patent Application Serial No. 12/210,926 (“the ‘926 App.”
`or “Child”)
`
`
`
`i
`
`
`
`CBM2016-00063
`Patent 8,266,432
`Attorney Docket No. 36137-0007CP1
`USAA-1014
`U.S. Patent Application Serial No. 11/239,046 (“the ‘046 App.”
`or “Parent”)
`
`USAA-1015
`
`U.S. Patent No. 7,444,676 (“the ‘676 Patent” or “’676”)
`
`USAA-1016
`
`U.S. Patent Application Serial No. 09/940,635 (“the ‘635 App.”
`or “Grandparent”)
`
`USAA-1017
`
`U.S. Patent Application Publication No. 2003/0046591 (“the
`‘591 Pub.” or “Grandparent Pub.”)
`
`USAA-1018
`
`RESERVED
`
`USAA-1019
`
`In re Zletz, 893 F.2d 319 (Fed. Cir. 1989)
`
`USAA-1020
`
`In re Hogan, 559 F.2d 595; 194 USPQ 527 (CCPA 1997)
`
`USAA-1021
`
`Advanced Display Sys., Inc. v. Kent State Univ. 212 F.3d 1272
`(Fed. Cir. 2000)
`
`USAA-1022
`
`RESERVED
`
`USAA-1023
`
`Cook Biotech Inc. v. Acell, Inc., 460 F.3d 1365, 1376 (Fed. Cir.
`2006).
`
`USAA-1024
`
`Reiffin v. Microsoft Corp. 214 F.3d 1342, 1346 (Fed. Cir. 2000)
`
`USAA-1025
`
`Informatica Corp. v. Protegrity Corp., CBM2015-00010, Paper
`13
`
`USAA-1026
`
`United Services Automobile Association v. NADER ASGHARI-
`KAMRANI and KAMRAN ASGHARI-KAMRANI, IPR2015-
`01842, Paper 13
`
`
`
`ii
`
`
`
`CBM2016-00063
`Patent 8,266,432
`Attorney Docket No. 36137-0007CP1
`USAA-1027
`
`United Services Automobile Association v. NADER ASGHARI-
`KAMRANI and KAMRAN ASGHARI-KAMRANI, IPR2015-
`01842, Paper 7
`
`USAA-1028
`
`PCT Application Publication WO2003021837 A1
`
`USAA-1029
`
`Bradford Co. v. Conteyor North America, Inc., 603 F.3d 1262
`(Fed. Cir. 2010)
`
`USAA-1030
`
`Accenture Global Services, GmbH v. Guidewire Software, Inc.,
`728 F.3d 1336 (Fed. Cir. 2013)
`
`USAA-1031
`
`Excerpts from the Prosecution History of the ‘676 Patent (“the
`Prosecution History of the ‘676 Patent”)
`
`USAA-1032
`
`U.S. Patent Application Publication No.: US 2006/0094403 A1
`(“Norefors”)
`
`USAA-1033
`
`Radius, IEEE RFC (Request for Comments) 2865 (incorporated
`by US 2006/0094403 A1)
`
`USAA-1034
`
`RESERVED
`
`USAA-1035
`
`U.S. Patent No. 5,740,361 (“Brown”)
`
`USAA-1036
`
`U.S. Patent Application Publication No.: US 20030080183
`(“Rajasekaran”)
`
`USAA-1037
`
`In re Fulton, 391 F.3d 1195 (Fed. Cir. 2004)
`
`USAA-1038
`
`VTech Comm. Inc. v. Shperix Inc., IPR2014-01431, Paper 50
`
`USAA-1039
`
`Oracle v. Clouding IP, IPR2013-00088, Paper 13
`
`USAA-1040
`
`Office Action for U.S. Patent Application Serial No.
`11/333,400, mailed July 6, 2010
`iii
`
`
`
`
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`CBM2016-00063
`Patent 8,266,432
`Attorney Docket No. 36137-0007CP1
`USAA-1041
`Terminal Disclaimer filed December 12, 2011, in U.S. Patent
`Application Serial No. 11/333,400 to Obviate a Provisional
`Double Patenting Rejection over U.S. Patent Application Serial
`No. 12/210,926
`
`USAA-1042
`
`Response to Office Action filed in U.S. Patent Application
`Serial No. 11/333,400 on November 17, 2011
`
`USAA-1043
`
`Response to Office Action filed in U.S. Patent Application
`Serial No. 11/333,400 on March 5, 2012
`
`USAA-1044
`
`Response to Office Action filed in U.S. Patent Application
`Serial No. 12/210,926 on November 17, 2011
`
`USAA-1045
`
`Response to Office Action filed in U.S. Patent Application
`Serial No. 12/210,926 on March 1, 2012
`
`USAA-1046
`
`February 8, 2016, letter from Michael T. Zoppo, Fish &
`Richardson, to Lei Mei and Reece Nienstadt, Mei & Mark LLP,
`re Continuity Priority Problems
`
`USAA-1047
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`Non-Publication Request filed by Patent Owner for U.S. Patent
`Application Serial No. 11/333,400 on January 18, 2006
`
`USAA-1048
`
`USAA-1049
`
`USAA-1050
`
`
`
`Declaration of Jeffrey K. Hollingsworth in Support of
`Plaintiff’s Rebuttal Brief on Claim Construction in Asghari-
`Kamrani et al. v. USAA, Civ. Action No. 2:15-cv-00478-RGD-
`LRL
`
`Plaintiff’s Rebuttal Brief on Claim Construction in Asghari-
`Kamrani et al. v. USAA in Asghari-Kamrani et al. v. USAA,
`Civ. Action No. 2:15-cv-00478-RGD-LRL
`
`Declaration of Dr. Seth Nielson Regarding the Claim to the
`Benefit of the Filing Date of U.S. Patent Application Serial No.
`11/333,400
`
`iv
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`
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`CBM2016-00063
`Patent 8,266,432
`Attorney Docket No. 36137-0007CP1
`USAA-1051
`U.S. Patent Application Serial No. 11/333,400 (the ‘400 App.)
`
`USAA-1052
`
`RESERVED
`
`USAA-1053
`
`
`
`
`Excerpts from the Prosecution History of U.S. Patent No.
`8,281,129 (“the ’129 Patent” or “the ‘129”)
`
`USAA-1054
`
`Declaration of Dr. Seth Nielson in support of Petitioner’s Reply
`
`USAA-1055
`
`Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997)
`
`USAA-1056
`
`
`
`
`Studiengesellschaft Kohle, M.B.H. v. Shell Oil Co., 112 F.3d
`1561 (Fed. Cir. 1997)
`
`USAA-1057
`
`
`
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d
`1375 (Fed. Cir. 2015)
`
`USAA-1058
`
`
`
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`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299,
`(Fed. Cir. 2008)
`
`USAA-1059
`
`
`
`
`Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 66
`USPQ2d 1429 (Fed. Cir. 2003)
`
`USAA-1060
`
`
`
`
`Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir.
`1991)
`
`USAA-1061
`
`
`
`
`US Endodontics, LLC v. Gold Standard Instruments, LLC,
`PGR2015-00019
`
`USAA-1062
`
`
`
`
`Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336 (Fed.
`Cir. 2010) (en banc)
`
`USAA-1063
`
`In re Wands, 858 F.2d 731 (Fed. Cir. 1988)
`
`
`
`v
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`
`
`CBM2016-00063
`Patent 8,266,432
`Attorney Docket No. 36137-0007CP1
`USAA-1064
`Parties’ Joint Statement on Claim Construction in Asghari-
`Kamrani et al. v. USAA, Civ. Action No. 2:15-cv-00478-RGD-
`
`
`
`
`
`
`LRL
`
`USAA-1065
`
`
`
`
`Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367 (Fed. Cir.
`2014), cert. denied, 135 S. Ct. 719 (2014).
`
`USAA-1066
`
`
`
`
`X2Y Attenuators, LLC v. Int’l Trade Comm’n, 757 F.3d 1358,
`(Fed. Cir. 2014)
`
`USAA-1067
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`
`
`
`SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307 (Fed. Cir.
`2015)
`
`USAA-1068
`
`Deposition Transcript of Alfred Weaver, Ph.D.
`
`vi
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`CBM2016-00063
`Patent 8,266,432
`Attorney Docket No. 36137-0007CP1
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`Table of Contents
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`
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`Introduction ..................................................................................................... 10
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` Procedural Deficiencies of the Alleged Claims to Priority ............................ 12
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`A. Highly Prejudicial to Allow Late Entry of Priority Claim and Certificate of
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`Correction ...................................................................................................... 12
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`B. The Entire Delay between the Date the Priority Claim Was Due and the Date
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`the Priority Claim Was Filed Could Not Have Been Unintentional ............. 14
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` The ’129 Patent Fails to Provide Supporting Disclosure to Satisfy 35 U.S.C.
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`112, First Paragraph, for the Claims of the ’432 Patent ................................. 15
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`A. PO Fails to Meet Its Burden of Production that the Claims of the ’432 Patent
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`Are Entitled to the Benefit of the ’129 Patent Filing Date ............................ 16
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`B. The ’129 Patent Fails to Provide Sufficient Support for the Claimed
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`Dynamic Code ............................................................................................... 19
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`C. The ’129 Patent Fails to Provide Sufficient Support for the Claimed
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`External-Entity ............................................................................................... 20
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`D. The ’129 Patent Fails to Provide Sufficient Support for the Claimed
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`External-Entity and Central-Entity Being the Same Entity ........................... 21
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`7
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`CBM2016-00063
`Patent 8,266,432
`Attorney Docket No. 36137-0007CP1
`E. The ’129 Patent Fails to Provide Sufficient Support for the Claimed Two
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`Central-Entity Computers .............................................................................. 24
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` The ’676 Patent Fails to Provide Supporting Disclosure to Satisfy 35 U.S.C.
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`112, First Paragraph, for the Claims of the ’432 Patent ................................. 26
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`A. PO Fails to Meet Its Burden of Production That the Claims of the ’432
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`Patent Are Entitled to the Benefit of the ’676 Patent Filing Date ................. 27
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`B. There Is No Unitary Mapping of the Claim Limitations to the Disclosure of
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`the ’676 Patent ............................................................................................... 29
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`1. The ’676 Patent Lacks Support for Authentication based on User-
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`Specific Information and the Dynamic Code as a Digital Identity ............... 30
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`2. The ’676 Patent Lacks Support for the Central-Entity Receiving a
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`Request for Authenticating the User from the External-Entity ..................... 31
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`3. The ’676 Patent Lacks Support for the Central-Entity Providing the
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`Dynamic Code to the User ............................................................................. 32
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`4. The ’676 Patent Lacks Support for the Central-Entity Providing a Result
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`of the Authenticating to the External-Entity ................................................. 33
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`5. The ’676 Patent Lacks Support for Two Central-Entity Computers
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`Performing the Claimed Distinct Functions .................................................. 34
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` CBM Eligibility in view of Unwired Planet Decision: .................................. 35
`8
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`CBM2016-00063
`Patent 8,266,432
`Attorney Docket No. 36137-0007CP1
` Conclusion ...................................................................................................... 36
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`9
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`CBM2016-00063
`Patent 8,266,432
`Attorney Docket No. 36137-0007CP1
`
`
` Introduction
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`Pursuant to 37 C.F.R. §42.64(b)(1), Petitioner, United Services Automobile
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`Association, replies to the Response of Patent Owner, Nader and Kamran Asghari-
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`Kamrani (“PO”).
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`As set forth in the Petition filed 5/2/16, and as acknowledged in the Board’s
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`Institution Decision, the claims of the ‘432 patent are anticipated by Norefors or
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`obvious over Norefors and Brown. PO does not refute the claims are obvious over
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`the prior art, instead contending the ’432 should be entitled the priority date of a
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`grandparent application through one of two alleged parent applications. As the
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`Board correctly noted in Instituting, the ’676 lacks sufficient supporting disclosure
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`for the independent claims of the ’432, and thus, the ’432 is not entitled to the
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`earlier effective filing date through this first claim. As depicted below, PO has
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`attempted to cure that deficiency by adding a new priority claim, first and
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`conveniently alleged eight years after the filing of the application leading to the
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`’432.
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`Not only is this newly-alleged priority claim nefarious, PO is unable to meet
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`their burden of proof that the ’129 patent provides sufficient disclosure to satisfy
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`the requirements of §112, ¶1, for each and every limitation of the ’432 patent’s
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`
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`10
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`
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`CBM2016-00063
`Patent 8,266,432
`Attorney Docket No. 36137-0007CP1
`claims. Instead, PO relies on modifications a person of ordinary skill in the art
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`(“APOSITA”) might make and embodiments the inventors might have envisioned,
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`but did not disclose. E.g., Paper 22, 15 (describing what “logically follows” from
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`the description); Appendix 1, 13. However, “[i]t is not sufficient for…the written
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`description requirement of §112 that the disclosure, when combined with the
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`knowledge in the art, would lead one to speculate as to modifications that the
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`inventor might have envisioned, but failed to disclose.” USAA-1055, 1572.
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`11
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`CBM2016-00063
`Patent 8,266,432
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`Additionally, in response to the Board’s proper disagreement with PO’s
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`Preliminary Response mapping of ’676 disclosure to claimed elements in the ’432,
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`PO now attempts to assert an alternative mapping of alleged supporting disclosure
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`in the ’676. However, as the Board correctly found, the ‘676 lacks sufficient
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`disclosure for the independent claims of the ‘432 at least because no viable
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`element-to-element mapping exists between the disclosed entities in the ‘676 and
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`the claimed entities in the ’432. Thus, PO’s new attempt at mapping aspects of the
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`disclosure in the ‘676 also fails to satisfy the requirements of §112, ¶1 for every
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`limitation of the ‘432 patent’s claims.
`
` Procedural Deficiencies of the Alleged Claims to Priority
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`A. Highly Prejudicial to Allow Late Entry of Priority Claim
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`As previously articulated (see Paper 13), it would be highly prejudicial to
`
`Petitioner to allow such a late entry of the alleged new, second claim of priority to
`
`the ’129 patent (“second priority”) through a petition and Certificate of Correction
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`(“CoC”) issued after the Institution Decision. As depicted above, this CBM
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`Petition was filed 5/2/2016, and PO did not motion to file a CoC until 7/27/2016,
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`and subsequently filed its “Petition to Accept an Unintentionally Delayed Claim to
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`Priority Claim” on 8/8/2016 (“First Petition”). The PTO dismissed PO’s First
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`Petition on 8/15/2016, and PO filed a new “Petition to Accept an Unintentionally
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`CBM2016-00063
`Patent 8,266,432
`Attorney Docket No. 36137-0007CP1
`Delayed Claim to Priority Claim” on 8/30/2016 (“Second Petition”). PO’s Second
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`Petition was granted, but importantly it was granted without any factual discovery
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`whatsoever of the alleged unintentional delay and it was granted despite expressed
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`PTO doubts as to the veracity of the unintentional delay: “…the entire delay…was
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`not unintentional if [one of the law firms] made the choice not to file…At least
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`one…prior law firm[] was aware of the existence of both…[since] a power of
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`attorney…was filed on the same date in [both].” Ex.2005. PO entered the granted
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`Second Petition into the present record on 9/23/2016 (see Ex.2006), after the
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`Institution Decision was issued on 9/21/2016 (see Paper 14).
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`The late entry of this new alleged claim to priority, not only after Petitioner
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`exhausted great resources in preparing the CBM Petition, but also after the Board’s
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`Institution, denies Petitioner notice sufficient to facilitate an informed inquiry and
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`an adequate opportunity to fully develop a record to address countless issues
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`attendant to the late priority claim. In particular, at the time of filing the CBM
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`Petition, the only claim to priority in existence was on the face of the ’432 patent
`
`as a continuation of the ‘046 App., issued as the ‘676, and which is a continuation
`
`of the ‘635 App., issued as the ‘837. But, that priority on the face of the patent
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`incorrectly reflects the actual priority claim PO made in the prosecution of the
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`’432. Rather, PO claimed priority by advancing that the application leading to the
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`CBM2016-00063
`Patent 8,266,432
`Attorney Docket No. 36137-0007CP1
`’432 was a continuation of both the ‘046 App. and the ‘635 App, without
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`indicating any CIP relationship between the ‘046 App. and the ‘635 App. USAA-
`
`1002, 674, 676. The only advanced priority claim was thus invalid with respect to
`
`the ‘635 App.1 at the time of filing the CBM Petition, making the earliest possible
`
`effective priority date of the ’432 (i.e., ignoring the issue of CIP support) the filing
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`date of the ‘046 App., 9/30/05 or its provisional filed 10/5/04. Thus, the priority
`
`claim to the ‘635 App. was defective as presented; PO is only potentially entitled
`
`to the benefit of priority of the ‘046 App, which has been shown to lack supporting
`
`disclosure. See MPEP 201.11; 201.06(d). Facing its deficiency, PO now attempts
`
`to change the effective priority date of the ’432 by introducing the second priority.
`
`Beyond its substantive flaws, the second priority should be denied due to the
`
`lateness with which it was pursued and the prejudicial impact of its entry by PO
`
`after CBM petition filing and institution.
`
`B. The Entire Delay Could Not Have Been Unintentional
`
`Aside from PO’s prejudicial timing, reliance on the second priority is
`
`improper and should not be considered because the entire delay of eight years
`
`
`1 The ‘635 App. issued and was not co-pending.
`
`14
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`CBM2016-00063
`Patent 8,266,432
`Attorney Docket No. 36137-0007CP1
`between the date the priority claim was due and the date the priority claim was
`
`filed could not have been unintentional.
`
`As set forth in more detail in prior filings, PO’s delay could not have been
`
`unintentional for several reasons, including: PO terminally disclaimed the ’400
`
`App. to the ‘926 App. explicitly showing PO was on notice of the existence and
`
`similarity of both (see Paper 9, 2-3, Paper 13, 2 (citing 1041)); PO had knowledge
`
`of problems with the priority claim in the ‘400 App. from Petitioner’s litigation
`
`counsel on 2/8/16 (see Paper 9, 5 (citing 1046)); PO filed powers of attorney in
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`both the ‘926 App. and the ‘400 App. on the same day by the same counsel and
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`both were signed by Applicants Nader Asghari-Kamrani and Kamran Asghari-
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`Kamrani (see Paper 13, 1-2 (citing 2005, 4-5; USAA-1002, 516-17; USAA-1053,
`
`510-11)); PO affirmatively disclaimed the second priority by signing and filing a
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`non-publication request establishing the ‘400 App. discloses a different invention
`
`than the grandparent. (see Paper 9, 4; Paper 13, 2-3 (citing USAA-1047).
`
` The ’129 Patent Fails to Satisfy §112, ¶1, for the ’432 Patent’s Claims
`
`The ’432 is not entitled to priority of the ’129 because the ’129 lacks
`
`supporting disclosure to satisfy the requirements of §112, ¶1, for the ’432 patent’s
`
`claims. See MPEP 2161 (“(A) A written description of the invention; (B) …the
`
`enablement requirement[]; and (C) The best mode….”). For example, a claim in a
`15
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`CBM2016-00063
`Patent 8,266,432
`Attorney Docket No. 36137-0007CP1
`continuation-in-part application only receives the benefit of its parent where the
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`parent provides written description support. See USAA-1056, 1564 (applicant must
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`“meet the disclosure requirement of §112, ¶1 in a single parent application in order
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`to obtain an earlier filing date for individual claims.”). PO fails to establish that the
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`’432 patent’s claims are supported by the disclosure of the ’400 App., and thus,
`
`fails to support a priority claim to the ‘837 patent through the ‘400 App. See
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`USAA-1020 (“There has to be a continuous chain of co-pending applications each
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`of which satisfies the requirements of §112 with respect to the subject matter
`
`presently claimed.”); USAA-1054, ¶¶7-14.
`
`A. PO Fails to Meet Its Burden that the’432 Patent Is Entitled to the ’129
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`Patent Filing Date
`
`As the Board properly noted in the Institution, it is PO’s burden to provide
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`evidence that the ’432 patent’s claims are entitled to the benefit of the priority date
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`of the ’129. See USAA-1057, 1380. PO has failed to meet that burden.
`
`PO gives short shrift to mapping the ‘129 patent’s disclosure to the ‘432
`
`patent’s claims, instead focusing on construed terms while also inadequately
`
`demonstrating support within the ‘129 for several of the claim terms, such as
`
`“dynamic code,” “user,” “central-entity,” and “external-entity.”. USAA-1054,
`
`¶¶15-45). Indeed, within the body of PO’s Response, as well as the supporting
`16
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`CBM2016-00063
`Patent 8,266,432
`Attorney Docket No. 36137-0007CP1
`Weaver declaration, no limitation-by-limitation support is provided for the ’432
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`patent’s claims. See USAA-1058, 1310–11 (holding the focus on the analysis of
`
`adequate §112 support remains on the scope as claimed, and the fact that a parent
`
`application could support a narrower scope of the invention for the same claim
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`term is insufficient). As the MPEP states , “[t]o comply with the written
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`description requirement…or to be entitled to an earlier priority date…under 35
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`U.S.C.…120,…each claim limitation must be expressly, implicitly, or inherently
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`supported in the originally filed disclosure.” §2163(II)(A)(3)(b) (emphasis added).
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`Further, to satisfy the written description requirement, the claimed invention must
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`be described in sufficient detail that APOSITA can reasonably conclude the
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`inventor had possession of the claimed invention. See, e.g., USAA-1059, 1319;
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`USAA-1060, 1563. Because the determination of whether the written description
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`requirement is satisfied requires the perspective of “one skilled in the art”, Dr.
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`Weaver’s lack of opinion/analysis regarding the explicit limitations of the claims
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`leaves PO’s contentions regarding the actual claim language as mere unsupported
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`attorney argument. USAA-1054, ¶¶15-18
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`As acknowledged during deposition, the Weaver declaration provided no
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`opinion/analysis for (nor, did it refer specifically to) each and every limitation in
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`the ’432, e.g., steps recited by method claims 1/48, and structures/features recited
`17
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`CBM2016-00063
`Patent 8,266,432
`Attorney Docket No. 36137-0007CP1
`by apparatus claims 25/52. USAA-1068, 115-116 (“Q. …you did not analyze each
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`and every limitation recited in the claims of the ‘432 patent…, correct?” A. “That’s
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`Correct.”). Further, Dr. Weaver admitted his declaration includes no
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`analysis/opinion regarding ’432 patent claims 3-4, 6-18, 20-24, 26-29, 31-45, 47,
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`50-51, and 54-55. USAA-1068, 116-118 (A. “…I analyzed claims 19, 2 and 5.” Q.
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`“…as for the remaining claims that are at issue in the CBMR, you did not provide
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`specific analysis with respect to the ’129 patent, correct?” A. “Correct.”). With no
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`supporting opinion/analysis from Dr. Weaver for those claims, PO offers nothing
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`more than attorney arguments in the form of charts, unsupported by evidence
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`establishing the perception of APOSITA regarding the sufficiency of the ’129
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`disclosure.
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`Moreover, §112, ¶1 imposes not just a written description requirement, but
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`also the separate and distinct requirements of enablement and best mode. USAA-
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`1062, 1341; MPEP §2161(II). PO fails to even attempt to demonstrate that the
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`’129 disclosure satisfies the best mode requirement and provides sufficient
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`disclosure to enable the ‘432 patent’s claims. USAA-1063, 737; MPEP §2164.08;
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`USAA-1060, 1561; USAA-1061.
`
`Based on these deficiencies alone, the ’432 claims are not entitled to the
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`priority date of the ’129. PO has failed to meet their burden for every claim
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`Patent 8,266,432
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`limitation recited by the ’432, and Dr. Weaver was unable to point to supporting
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`disclosure in the ’129, because it does not exist.
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`B. The ’129 Patent Fails to Support the Claimed Dynamic Code
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`PO contends the claimed “dynamic code” corresponds to the “SecureCode”
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`in the ‘432. Paper 22, 10. The ’432 defines the SecureCode, as “any dynamic,
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`non-predictable and time dependent alphanumeric code, secret code, PIN or other
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`code ….” USAA-1054, ¶¶42-43. As PO also acknowledges, the “SecureCode”
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`(“dynamic code”) may be something other than alphanumeric, i.e., non-
`
`alphanumeric. Paper 22, 10. The claim language supports this interpretation,
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`reciting “a user-specific information and the dynamic code as a digital identity”
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`and the specification defines “digital identity” as “a combination of user’s
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`‘SecureCode’ and user’s information.” ‘432, 2:41-45, 5:29-30;USAA-1054, ¶44.
`
`Further, claims 1 and 25 recite only a “dynamic code,” whereas claims 48 and 52
`
`recite the “dynamic code is alphanumeric.” Thus, from the disclosure and through
`
`claim differentiation, the full scope of the claimed “dynamic code” must include a
`
`non-alphanumeric code. USAA-1054, ¶44. Accordingly, the BRI of “dynamic
`
`code” includes both an alphanumeric code and a non-alphanumeric code, such that
`
`to satisfy the written description requirement, the ’129 must provide supporting
`
`disclosure for a dynamic code that can be alphanumeric and non-alphanumeric. Id.
`19
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`CBM2016-00063
`Patent 8,266,432
`Attorney Docket No. 36137-0007CP1
`The ’129, however, only describes a “dynamic key,” which PO alleges
`
`corresponds to the claimed “dynamic code,” as “an alphanumeric code.” Ex.1004,
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`6:60-62, 8:15-19, 8:53-55; USAA-1054, ¶44. While PO argues “dynamic code” is
`
`not required to be alphanumeric, PO fails to provide any support in the ’129 for the
`
`“dynamic key” being anything other than an alphanumeric code. Id. Therefore,
`
`PO fails to show, and the ’129 fails to provide, support for the full scope of the
`
`claimed “dynamic code.”
`
`C. The ’129 Patent Fails to Support the Claimed External-Entity
`
`In related proceedings, PO contends the ’432 patent’s “external-entity” is not
`
`limited to corporate personalities, but encompasses computer systems. USAA-
`
`1064, 4. The ’129 explicitly defines the “business” as a “company or
`
`organization,” i.e., a corporate identity/personality, not limited to a computer
`
`system. Ex.2004, 7:54-55; USAA-1068, 1059-1060 (Q. “…the patentee telling us
`
`that’s how the business 20 should be used in the ’129 patent, that’s not referring to
`
`just a computer. It’s referring to a company or organization, correct?” A. “…yes,
`
`the business is a company or organization.”). Because the “business” disclosed in
`
`the ’129 is limited to a “company or organization,” the “business” fails to provide
`
`supporting disclosure for the full scope of the claimed “external-entity,” which PO
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`contends includes solely a computer system. USAA-1054, ¶¶35-41.
`20
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`Patent 8,266,432
`Attorney Docket No. 36137-0007CP1
`Moreover, as PO admits, the “business” of the ’129 requires a trusted
`
`relationship with a trusted-authenticator. Paper 22, 16, citing 2004, 7:54-58
`
`(“business broadly refers to a company or organization…that has established a
`
`trusted relationship with a trusted-authenticator 40 and that needs to authenticate
`
`the identity of the individual.”); USAA-1068, 134 (Q. “…as that business 20 is
`
`described in the’129 patent, it must have a relationship with at least one trusted
`
`authenticator, correct?” A. “Yes.”). By contrast, the claimed “external-entity” of
`
`the ’432 is not limited to having a trusted relationship with the claimed “central-
`
`entity.” USAA-1054, ¶¶37-39. Accordingly, the ’432 patent’s claims are broader
`
`than, and not supported by, the ’129 disclosure. See USAA-1058, 1310-11.
`
`D. The ’129 Patent Fails to Support the External-Entity and Central-
`
`Entity Being the Same Entity
`
`The BRI of the independent claims includes two requirements: the “external-
`
`entity” and “central-entity” can both include different entities and the “external-
`
`entity” and the “central-entity” may be the same entity. USAA-1054, ¶38. That
`
`understanding of the BRI may be derived from the specification alone and is
`
`buttressed by claims 11, 46, 49, and 53, which limit their independent claims by
`
`narrowing the scope to only the scenario where the “external-entity” and the
`
`
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`21
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`“central-entity” are the same entity.2 See, e.g., USAA-1026, 6. In other words, for
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`the claim to be a proper dependent claim, “it shall not conceivably be infringed by
`
`anything which would not also infringe the basic claim.” MPEP 608.01(n)(III);
`
`see USAA-165, 1376 (“Under the principles of claim differentiation, the
`
`independent claims are presumed to be broader [than the dependent claims].”).
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`Again, the ’432 patent’s claims would be entitled to the priority date of the ’400
`
`App. only if the ’400 App. provides sufficient support for the full scope of the
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`
`2 Although PO disclaimed claims 11, 46, 49, and 53 via Statutory Disclaimer on
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`12/1/16, the subject matter of those claims is part of the original disclosure
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`(original claims 6, 7, 26 and 27 reciting that the External-Entity and Central-Entity
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`are the same organization or are within the same organization), and still should be
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`considered in determining the scope of the independent claims despite the
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`disclaimer being immediately effective for enforcement purposes. Allergan Sales,
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`LLC v. Sandoz., Inc., 2013 WL 4854786, 4 & 6 (E.D. Tex. 2013) (ruling that
`
`disclaimed dependent claims were part of the prosecution history and could be
`
`used in construing the independent claim); 37 CFR 1.321(a); J.P. Morgan Chase,
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`CBM2014-00157, Paper 11, 2-3 (“…disclaimer of claim 12 does not change the
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`scope of claim 1, from which it depends.”).
`
`22
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`Patent 8,266,432
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`claims of the ’432. USAA-1066, 1365 (“…a claim is entitled to the priority date of
`
`an earlier application only if the earlier specification provides sufficient written
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`support for the full scope of the claim.”). There is no supporting disclosure in the
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`’129 for the “business”, which allegedly corresponds to the claimed “external-
`
`entity,” and the “trusted-authenticator”, which allegedly corresponds to the claimed
`
`“central-entity,” being the same entity. USAA-1054, ¶¶38-39. In fact, APOSITA
`
`would have understood that for the intended security purposes of the ’129, the
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`business and the trusted-authenticator 30 must be different entities. Id. The
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`topology and purpose of all embodiments described in the ’129 require the
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`“business” and the “trusted-authenticator” be different entities. See Ex.2004, Figs.
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`2a, 2b (annotated below); USAA-1054, ¶39.
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`23
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`CBM2016-00063
`Patent 8,266,432
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`‘129 Patent, Figs. 2a, 2b annotated.
`
`
`E. The ’129 Patent Fails to Support Two Central-Entity Computers
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`Claims 25 and 52 of the ’432 recite a “first central-entity computer” adapted
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`to perform certain functions and a “second central-entity computer” adapted to
`
`perform other functions. Similarly, claim 48 of the ’432 recites “a computer
`
`associated with a central-entity” and “another computer associated with the
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`central-entity.” PO contends, without citation to the ’129 or support from Dr.
`
`Weaver’s declaration, that the trusted-authenticator of the ’129 “can comprise two
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`computing devices, including a first computing device that generates dynamic
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`codes.” See Paper 22, Appendix 1, 13. There is nothing in the ’129 that can
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`provide sufficient support for the claimed two central-entity computers, let alone
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`two central-entity computers with the recited distinct configuration and
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`functionality. USAA-1054, ¶¶56-57.
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`On page 1 of Appendix 1, PO misquotes the ’129: “The individual [user]
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`requests a dynamic key [dynamic code] from his/her trusted-authenticator [central
`
`entity] (using a computing device of the central entity connected any [sic]
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`communication network such as Internet or wireless)….” Paper 22, citing 2004,
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`7:6-8. Crucially, the text in parentheticals is not included in that cited portion of
`
`the ’129 or elsewhere in the ’129, and its inclusion in the quote is misleading.
`24
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`CBM2016-00063
`Patent 8,266,432
`Attorney Docket No. 36137-0007CP1
`Rather, the ’129 only states: “the individual requests [a dynamic key] from his/her
`
`trusted authenticator 30 by communicating over a communication network 50.”
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`9:19-22; 55-58. Thus, contrary to PO’s contention, the ’129 has no explicit
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`supporting disclosure for “a computing device of the central entity,” such that the
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`’129 cannot provide supporting disclosure for two central-entity computers.
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`
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