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,
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`Petitioner
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`v.
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`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
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`Patent Owners
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`U.S. PATENT 8,266,432
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`Case CBM2016-00063
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`PATENT OWNER’S ADDITIONAL BRIEF
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`Mail Stop: PATENT BOARD
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`Patent Trial and Appeal Board
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`United States Patent and Trademark Office
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`P.O. Box 1450
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`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`
`
`
`Petitioner
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`v.
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`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
`
`Patent Owners
`
`
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`U.S. PATENT 8,266,432
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`Case CBM2016-00063
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`
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`PATENT OWNER’S ADDITIONAL BRIEF
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`
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`
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`Mail Stop: PATENT BOARD
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`Patent Trial and Appeal Board
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`United States Patent and Trademark Office
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`P.O. Box 1450
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`Alexandria, VA 22313-1450
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`Trial CBM2016-00063
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`Secure Axcess, LLC v. PNC Bank Nat’l Ass’n et al., No. 2016-1353 (Fed. Cir.
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`Feb. 21, 2017) (“Secure Axcess”) clarified the standard for instituting “covered
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`business method” (“CBM”) review. This paper solely addresses whether the ‘432
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`Patent qualifies for CBM review with regard to the “financial product or service”
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`prong in light of Secure Axcess. As detailed below, Secure Axcess establishes that
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`the Decision to Institute the subject CBM reviews was incorrect. Accordingly,
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`Patent Owner respectfully requests that Board immediately terminate the subject
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`CBM reviews. Doing so is in the interest of justice since the CBM clouds the Patent
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`Owner’s otherwise settled patent rights, while continuing to consume substantial
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`resources of the Patent Owner and the Petitioner.
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`a. The ‘432 Patent does Not Claim the Method or System Used in ...
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`In Secure Axcess, the court emphasized that, to qualify for CBM review, a
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`patent must contain at least one claim to the effect that the method or apparatus is
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`“used in the practice . . . of a financial product or service” as properly construed;
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`and that the written description alone cannot substitute for what may be missing in
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`the patent “claims,” and therefore does not in isolation determine CBM eligibility.
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`Secure Axcess at pp. 12-15 (emphasis added).
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`U.S. Patent No. 7,631,191 (“the ‘191 patent”) involved in Secure Axcess does
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`not claim a method or system used in the practice of a financial product or service.
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`See claims 1 and 17. However, the written description of the ‘191 Patent contains
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`1
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`Trial CBM2016-00063
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`implementations that are financial in nature. Secure Axcess at 4. For example, the
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`‘191 Patent discloses, “… the system contemplates the use, sale or distribution of
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`any goods, services or information over any network… .” Col. 11, lines 17-21
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`(emphasis added). Additionally, it discloses that the system can include a
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`“customer,” a “merchant,” a “bank,” wherein “[e]ach participant is equipped with a
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`computing system to facilitate online commerce transactions.” Col. 11, lines 22-31
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`(emphasis added).
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`As in Secure Axcess, the ‘432 Patent discloses implementations that are
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`financial or non-financial. For example, the ‘432 Patent discloses authenticating a
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`user to access restricted web sites using a digital identity (e.g., col. 2, line 67-col 3,
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`line 1 and col. 3, lines 32-33) and to access a restricted web site to buy services or
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`products (e.g., col. 5, lines 5-7). And, just as in the Secure Axcess, the claims of the
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`‘432 Patent lack any recitation of financial terminology or activity. For instance,
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`claim 1 of the ‘432 Patent recites a method “for authenticating a user during an
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`electronic transaction between the user and an external entity” and requires each
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`recited method step to be performed “during the transaction” as characterized by the
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`Board. Institution Decision, paper 14, p. 7.
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`In the subject CBMs, similar to the error committed by the Board in Secure
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`Axcess,
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`the Board’s claim
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`interpretation only focused on
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`the
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`financial
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`implementations disclosed in the ’432 Patent, disregarding the non-financial
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`2
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`Trial CBM2016-00063
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`implementations, and concluded that the Specification consistently describes the
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`“electronic transaction between the user and an external-entity” in a financial context
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`for purchasing goods or services in e-commerce. Id. However, the claimed use (i.e.,
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`“authenticating a user during an electronic transaction”) is not a financial activity or
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`service when given its broadest reasonable interpretation in light of the
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`Specification. The proper construction of the term “transaction” is “an electronic
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`transaction between the user and the external entity.” PO Response, at 7. Thus, the
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`term “transaction” or “during the transaction” does not require sales of goods or
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`services, and is not otherwise financial in nature.
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`Further, the term “external entity” is not recited as a financial product or
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`service in the claims but as a party for example having a restricted website that
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`requires user authentication before allowing access or offering its product or service,
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`and thus does not constitute the required recitation of the use of the claimed
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`authentication method in a financial product or service. Also, the term “user” is not
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`recited as a financial product or service but as a party that uses the claimed
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`authentication method. More importantly, the term “external entity” which can be a
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`financial institution and the term “user” which can be a customer like in Secure
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`Axcess have no weight to consider because the court held that the authentication
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`method of Secure Axcess that “could be used by various institutions that include a
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`financial institution, among others, does not mean a patent on the invention qualifies
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`3
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`Trial CBM2016-00063
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`under the proper definition of a CBM patent.” See Secure Axcess, at 5 and 21. Under
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`this proper construction, the ‘432 Patent claims the computerized authentication
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`method which is a prerequisite for an electronic transaction like the authentication
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`method of Secure Axcess. Therefore, the ‘432 Patent does not explicitly or implicitly
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`claim the use of the claimed method in the practice of a financial product or service.
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`b. The Claimed Authentication Method and System are Not a Financial
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`Product or Service but Incidental or Complementary to a Financial Activity
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`In clarifying what types of uses that qualify a patent for CBM review, Secure
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`Axcess chose not to set forth “talismanic words.” Id. at p. 19. Rather, Secure Axcess
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`held, “When properly construed in light of the written description, the claim need
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`only require one of a ‘wide range of finance-related activities,’ examples of which
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`can be found in the cases which we have held to be within the CBM provision.” Id.,
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`referencing Versata, 793 F.3d at 1312–13, 1325–26; Blue Calypso, 815 F.3d at
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`1339–40; and SightSound, 809 F.3d at 1315–16.
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` When instituting the CBM review of the ‘191 Patent, the Board
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`acknowledged that the patent is directed to authenticating web pages. Based on its
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`disclosure of financial activities and real-world use by financial institutions, the
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`Board concluded that the ‘191 Patent qualified for CBM review. Secure Axcess at
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`8-9. However, Secure Axcess held that the claimed use of authenticating web pages
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`is incidental to the financial activity disclosed in the ‘191 Patent. Further, Secure
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`4
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`Trial CBM2016-00063
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`Axcess held that patent claims that are merely incidental or complementary to
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`financial activities or services are not in the scope of the CBM statute. Id. at 17-18.
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`The claims of the ‘432 Patent are unlike the “wide range of finance-related
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`activities which the courts have held to be within the CBM provision.” For example,
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`the claims in Versata determined a product price, the claims in Blue Calypso
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`provided a peer-to-peer advertising system with a recitation of financial term in
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`nature such as “subsidy”, and the claims recite in SightSound movement of money
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`between financially distinct entities. Differently,
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`the ‘432 Patent claims
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`authenticating a user, which is similar to authenticating a web page, which Secure
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`Axcess determined to be merely incidental or complementary to a financial activity.
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`As discussed supra, the claims in the ‘191 Patent and the ‘432 Patent similarly do
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`not recite any use in the financial activities described in their respective
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`Specifications. Instead, the claimed authentication method merely could be used by
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`financial institutions, among others. Therefore, as held in Secure Axcess, the
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`potential or actual use of the Patent Owner’s invention in financial or non-financial
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`activities as described in the Specification does not make the ‘432 Patent eligible for
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`CBM review.
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`Consequently, the subject CBM reviews are not in accordance with the AIA
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`and Patent Owner respectfully requests that the Board terminate the CBM reviews.
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`Respectfully submitted, /Jae Youn Kim/ Counsel for PO, March 30, 2017
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`5
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`Trial CBM2016-00063
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e)(4), this is to certify that I caused to be served
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`a copy of the foregoing “PATENT OWNER’S ADDITIONAL BRIEF” for Covered
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`Business Method Review (CBM2016-00063) of U.S. Patent 8,266,432 via electronic
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`mail on March 30, 2017 to the Petitioner’s counsel of record at the following email
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`Respectfully submitted,
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`_/Jae Youn Kim/_________
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`Jae Youn Kim
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`NOVICK, KIM & LEE, PLLC
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`3251 Old Lee Highway Suite 404
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`Fairfax, VA 22030
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`
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`Tel: 1-703-745-5495
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`Fax: 1-703-563-9748
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`skim@nkllaw.com
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`addresses:
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`W. Karl Renner, Lead Counsel
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`Thomas A. Rozylowicz, Back-up Counsel
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`Timothy W. Riffe
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`CBM36137-0007CP1@fr.com
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`PTABInbound@fr.com
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`rozylowicz@fr.com
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`riffe@fr.com
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`Date: March 30, 2017
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`6
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