UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`United Services Automobile Association,
`Petitioner,
`v.
`
`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
`Patent Owner
`______________________
`
`Case CBM2016-00063
`Patent 8,266,432
`______________________
`
`PETITIONER’S MOTION FOR OBSERVATIONS
`
`
`
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`United Services Automobile Association,
`Petitioner,
`v.
`
`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
`Patent Owner
`______________________
`
`Case CBM2016-00063
`Patent 8,266,432
`______________________
`
`PETITIONER’S MOTION FOR OBSERVATIONS
`
`
`
`
`
`
`CBM2016-00063
`Patent 8,266,432
`
`
`
`Petitioner submits the following observations regarding the March 28, 2017,
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`cross-examination testimony of Petitioner’s Reply declarant, Dr. Seth Nielson.
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`1. In Ex. 2014, Deposition Transcript of Seth Nielson, Ph.D., on page 146,
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`
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`line 3 to page 152, line 6, Dr. Nielson testified:
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`Q. You've been handed what's been marked as Exhibit 10. What is this docu-
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`ment?
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`A. It appears to be patent owner response identified CBM2016-00064.
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`Q. And what is Exhibit 2?
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`A. So it says that it's patent owners' response, identified CBM2016-00063.
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`…
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`Q. Okay, thank you. Dr. Nielson, based on the differences that you identified
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`between Exhibits 2 and Exhibits 10, do any of those differences change your
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`opinions set forth in your declarations -- in your declaration, which is marked
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`as Exhibit 1?
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`A. No.
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`
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`This testimony is relevant to the two substantially identical Patent Owner’s
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`Responses, considered by Dr. Nielson, and whether they fail to establish that either
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`the ‘676 or the ‘129 provide written description support for the claims of the ‘432
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`1
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`CBM2016-00063
`Patent 8,266,432
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`2. In Ex. 2014, on page 152, line 7 to page 153, line 2, Dr. Nielson testified:
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`Q. Now turning to Exhibit 1, you were asked some questions earlier regarding
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`whether or not you agreed with patent owner if you did not address a point
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`raised by patent owner in its patent owner response...
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`…
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`Q. If you could turn to paragraph 19 of your declaration, which is on page 9 of
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`52 of Exhibit 1, and please read that into the record.
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`A. "I have not set forth an opinion about each and every statement in either pa-
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`tent owners' response or Dr. Weaver's declaration. Nevertheless, I explicitly
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`disclaim endorsement for any opinion not specifically addressed herein."
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`Q. Do you wish to change anything that you've stated in paragraph 19?
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`A. No.
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`
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`This testimony is relevant to the mapping of claim terms stated in Appen-
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`dices 1 and 2 of the Patent Owner’s Responses and to the arguments on pages 2-
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`27, Appendix 1, and Appendix 2 of the Patent Owner’s Responses
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`3. In Ex. 2014, on page 38, lines 1 to 12, Dr. Nielson testified:
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`Q. So given that the '837 patent was originally filed in 2001, the '837 patent is
`
`the grandparent of the '432 patent, and the '837 patent has the same exact spec-
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`ification and figures as the '432 patent, would you conclude that the '837 patent
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`2
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`CBM2016-00063
`Patent 8,266,432
`
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`is a single parent application whose original disclosure supports each -- the en-
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`tire disclosure of the '432 patent?
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`…
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`A. So I would say no based on the legal principles as I understand them.
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`
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`This testimony is relevant to whether the application for the ‘837 Patent pro-
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`vides written description support for the subject matter claimed by the ‘432 Patent
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`4. In Ex. 2014, on page 64, lines 3 to 15; page 65, lines 3 to 21; page 74,
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`
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`line 19 to page 75, line 10, Dr. Nielson testified (emphasis added):
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`Q. Can you show me an example of that in your declaration please?
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`…
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`A. …I set forth that conclusion that user as disclosed and claimed in the '432
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`patent is broader than individual as disclosed in the '129 patent, and the '129
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`patent therefore does not provide sufficient written description support.
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`…
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`Q. So in the entire section A, do you mention what a POSITA would consider
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`reasonable?
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`…
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`3
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`CBM2016-00063
`Patent 8,266,432
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`A. As I set forth in the beginning principles, yes. I didn't -- I put those there to
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`describe the principles that I used throughout, and where I thought it was help-
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`ful, I emphasized one or another throughout the report, but all of the principles
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`are applied in my analysis.
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`Q. They're applied but they're not written in your analysis, correct?
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`…
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`A. So this is my analysis section, but in the opinions I set forth, they're all
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`based on these legal principles as I've been given them. That's why they're in-
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`cluded in the report.
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`…
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`Q. But as we previously discussed, merely asserting that a term is broader than
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`its corresponding disclosure is not sufficient by itself to establish lack of written
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`description support, correct?
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`…
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`A. The key thing here is that the trusted relationship is an important part of
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`how the -- the '129 patent is set forth. The trusted relationship is a -- is not a
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`minor part of the disclosure. Somebody of skill in the art looking at the '129
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`patent is not going to reasonably conclude that that describes the user who
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`does not have to have that trusted relationship.
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`4
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`CBM2016-00063
`Patent 8,266,432
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`
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`This testimony is relevant to how a POSITA would interpret the claim terms
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`of the ‘432 Patent and whether the ‘129 patent fails to provide sufficient written
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`description supporting the full scope of those claim terms to a POSITA, pursuant
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`to the written description requirement under 35 U.S.C. § 112, first paragraph. In
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`particular, this testimony is relevant to whether a POSITA would conclude that the
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`“individual” disclosed in the ‘129 patent as requiring a trusted relationship fails to
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`provide written description support for the claimed “user” in the ‘432 patent.
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`5. In Ex. 2014, on page 81, line 16 to page 84, line 8; page 97, line 21 to
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`
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`page 98, line 3, Dr. Nielson testified (emphasis added):
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`Q. With all that, would you in your opinion characterize the relationship be-
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`tween the user and the central entity as a trust-based relationship?
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`A. It is not a trusted relationship, no.
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`…
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`so the term here is a term that would be understood by one of skill in the art
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`from a security perspective. Trust doesn't mean like well, I've known you for a
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`long time and I think you're a great person and therefore I can trust you with
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`secrets. Trust is described actually in the '129 patent.
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`…
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`5
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`CBM2016-00063
`Patent 8,266,432
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`on the other hand, a centralized entity is an entity wherein you are giving infor-
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`mation, but it's not based on a trust relationship.
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`…
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`And so with the centralized entity, what you're doing is you're consolidating all
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`of her risk into a single basket instead of spreading it around, but it doesn't re-
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`quire that you already trust them or that you have a trusted relationship with
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`them.
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`…
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`Q. So therefore, a POSITA would reasonably conclude that the '432 patent in-
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`volves a trust relationship between the user and the central-entity, right?
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`A. No.
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`
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`This testimony is relevant to how a POSITA would interpret the claim terms
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`of the ‘432 Patent and whether the ‘129 patent fails to provide sufficient written
`
`description supporting the full scope of those claim terms to a POSITA, pursuant
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`to the written description requirement under 35 U.S.C. § 112, first paragraph. In
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`particular, this testimony is relevant to whether a POSITA would conclude that the
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`“individual” and “trusted-authenticator” disclosed in the ‘129 patent as requiring a
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`trusted relationship fail to provide written description support for the claimed
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`“user” and “central-entity” in the ‘432 patent.
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`6
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`CBM2016-00063
`Patent 8,266,432
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`6. In Ex. 2014, on page 103, lines 6 to 16; page 104, line 22 to page 105,
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`line 8, Dr. Nielson testified (emphasis added):
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`Q. Can you please explain to me why you believe that the dynamic code in the
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`'432 is broader than the dynamic key in the '129 patent?
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`…
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`A. So starting in paragraph 43 and 44, so as I set forth here, it is my under-
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`standing that based on the principles that I've been provided that the dynamic
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`code does not have to be alphanumeric, and in the '129 patent, it is only alpha-
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`numeric.
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`…
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`Q. How are the definitions of SecureCode in the '432 patent and the '129 patent
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`different?
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`A. Well, in the '129 patent, it says the use of dynamic key refers to SecureCode,
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`and then explains that it is alphanumeric, and that's what the '129 says, and in
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`the '432 patent, it says, "The term 'SecureCode' is used herein to note" -- "de-
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`note any dynamic, nonpredictable and time-dependent alphanumeric code, se-
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`cret code, PIN or other code."
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`
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`This testimony is relevant to how a POSITA would interpret the claim terms
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`of the ‘432 Patent and whether the ‘129 patent fails to provide sufficient written
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`description supporting the full scope of those claim terms to a POSITA, pursuant
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`
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`7
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`CBM2016-00063
`Patent 8,266,432
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`to the written description requirement under 35 U.S.C. § 112, first paragraph. In
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`particular, this testimony is relevant to whether a POSITA would conclude that the
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`“dynamic key” disclosed in the ‘129 Patent fails to provide written description sup-
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`port for the claimed “dynamic code” in the ‘432 Patent.
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`7. In Ex. 2014, on page 135, lines 7 to 17; page 138, lines 5 to 11; page 141,
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`
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`line 12 to page 142, line 2, Dr. Nielson testified (emphasis added):
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`Q. In that case, could you consider the RPFI or OPFI to be a computer associ-
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`ated with the D.I.D. operator?
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`…
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`A. I don't think that's how one of ordinary skill in the art would understand that.
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`Q. Under the broadest reasonable interpretation standard, would you consider
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`the OPFI to be a computer associated with the central-entity?
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`…
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`A. No, no, I wouldn't.
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`…
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`Q. And if I argued that the RPFI in figure 8 of the '676 patent was a computer
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`associated with the receiver, would you agree?
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`8
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`CBM2016-00063
`Patent 8,266,432
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`A. …I still don't think that that would be a computer associated with the exter-
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`nal-entity. The bank's computer would not be a computer associated with the
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`external-entity.
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`…
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`A. What I'm saying that they do disclose is that the RPFI does processing on
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`the message when it comes in.
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`Q. Uh-huh.
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`A. So in terms of whether or not you're going to have it be a pass-through type
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`set-up, that's not what's happening here. The data flow -- there's not a single
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`data flow that goes from receiver to D.I.D. operator.
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`Q. Uh-huh.
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`A. There's a data flow from receiver to RPFI, then there's processing, and then
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`there's a data flow from RPFI processing to D.I.D. operator.
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`
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`This testimony is relevant to how a POSITA would interpret the claim terms
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`of the ‘432 Patent and whether the ‘676 patent fails to provide sufficient written
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`description supporting those claim terms to a POSITA, pursuant to the written de-
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`scription requirement under 35 U.S.C. § 112, first paragraph. In particular, this
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`testimony is relevant to whether a POSITA would conclude that the “RPFI”,
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`
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`9
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`CBM2016-00063
`Patent 8,266,432
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`“OPFI”, or “DID Operator” disclosed in the ‘676 Patent fail to provide written de-
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`scription support for the claimed “external-entity”, “central-entity” or “computer
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`associated with the central-entity” in the ‘432 Patent.
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`8. In Ex. 2014, on page 117, line 21 to page 118, line 2; page 126, line 13 to
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`
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`page 127, line 22, Dr. Nielson testified (emphasis added):
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`Q. Would you consider box 298, RPFI notifying the receiver, to be a result of
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`the authentication that occurred at box 260?
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`A. As it's used in the claim, no.
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`…
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`Q. … So hypothetically the D.I.D. operator 30 successfully validates the digital
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`identity of the user 20, and the corporate customer slash receiver 40 receives a
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`payment, would that payment be considered -- reasonably be considered a re-
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`sult of the authenticating?
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`A. I don't think so, no.
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`Q. Would that payment occur if the authentication wasn't successful?
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`A. Well, if we're talking about hypotheticals, then yes, it could.
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`Q. Why?
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`A. So the transactions are happening between the customer's bank and the re-
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`ceiving bank. I don't know what their policies may or may not be. What the
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`10
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`CBM2016-00063
`Patent 8,266,432
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`D.I.D. operator does is give the OPFI or the RPFI some knowledge about au-
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`thentication, and then whether or not they authorize the transaction is up to
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`them.
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`…
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`A. Well, so authentication is identifying the -- you know, validating the identity
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`of somebody, and so if you have the D.I.D. operator validate the identity to one
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`of these banks, that gives the bank information on which they can exercise their
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`own policies. So then what happens after that is not just a function of the au-
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`thentication. It's a function of how the banks choose to act on that infor-
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`mation.
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`
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`This testimony is relevant to how a POSITA would interpret the claim terms
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`of the ‘432 Patent and whether the ‘676 patent fails to provide sufficient written
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`description supporting claim terms to a POSITA, pursuant to the written descrip-
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`tion requirement under 35 U.S.C. § 112, first para-graph. In particular, this testi-
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`mony is relevant to whether a POSITA would conclude that the “RPFI”, “OPFI”,
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`or “DID Operator” disclosed in the ‘676 Patent fail to provide written description
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`support for the claimed “external-entity”, “central-entity” or “computer associated
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`with the central-entity” in the ‘432 Patent.
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`11
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`Respectfully submitted,
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`/Thomas A. Rozylowicz/
`
`
`
`Thomas A. Rozylowicz,
`Reg. No. 50,620
`W. Karl Renner,
`Reg. No. 41,265
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Attorney for Petitioner
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`CBM2016-00063
`Patent 8,266,432
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` 4/10/2017
`Dated:
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`(Control No. CBM2016-00063)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on April 10,
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`2017, a complete and entire copy of this Petitioner’s Motion for Observation was
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`provided via email to the Patent Owner by serving the correspondence email ad-
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`dresses of record as follows:
`
`Jae Youn Kim
`Harold L. Novick
`Sang Ho Lee
`Novick, Kim & Lee, PLLC
`1604 Spring Hill Rd. Suite 320
`Vienna, VA 22182
`
`
`
`Steven L. Ashburn
`Timothy M. Hsieh
`MH2 Technology Law Group, LLP
`1951 Kidwell Drive, Suite 550
`Tysons Corner, VA 22182
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`Email: skim@nkllaw.com
`Email: hnovick@nkllaw.com
`Email: slee@nkllaw.com
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`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
`
`
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