IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Asghari-Kamrani et al.
`In re Patent of:
`8,266,432
`Attorney Docket No.: 36137-0007CP1
`U.S. Patent No.:
`September 11, 2012
`
`Issue Date:
`Appl. Serial No.: 12/210,926
`
`Filing Date:
`September 15, 2008
`
`Title:
`CENTRALIZED IDENTIFICATION AND
`AUTHENTICATION SYSTEM AND METHOD
`
`
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`UNITED STATES PATENT NO. 8,266,432 PURSUANT TO 35 U.S.C. § 321
`AND § 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`

`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`
`TABLE OF CONTENTS
`
`I.  MANDATORY NOTICES UNDER 37 C.F.R §§ 42.8(a)(1), 42.8(b)(1),
`42.8(b)(2), 42.8(b)(3) AND PAYMENT OF FEES UNDER 37 C.F.R §
`42.103 .............................................................................................................. 1 
`
`II.  REQUIREMENTS FOR CBM UNDER 37 C.F.R. § 42.304 ..................... 2 
`A.  Grounds for Standing Under 37 C.F.R. § 42.304(a)................................. 2 
`B.  Challenge Under 37 C.F.R. § 42.304(b) and Relief Requested ............... 2 
`C.  Claim Construction under 37 C.F.R. §§ 42.104(b)(3) .............................. 4 
`D.  The ‘432 Patent is a Covered Business Method Patent ............................ 9 
`E.  The ‘432 Patent Is Not Directed to a Technological Invention, And
`Thus, Should Not Be Excluded From the Definition of a CBM Patent. 12 
`
`III.  THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘432 PATENT IS UNPATENTABLE ......................... 16 
`A.  The Effective Priority Date for the ‘432 Patent is Sept. 15, 2008,
`Because the Parent Fails to Provide Written Description Support for the
`Claims of the ‘432 Patent ........................................................................ 16 
`1. 
`The Parent Fails to Incorporate by Reference the Grandparent .... 18 
`2. 
`The Parent Lacks Written Description Support for the Claims of
`The ‘432 Patent. ............................................................................ 19 
`The Patent Owners (POs) Admit that the Parent Discloses A
`Different Invention than the ‘432 Patent, Precluding Continuity of
`Disclosure. ..................................................................................... 26 
`B.  GROUNDS 1 and 2- Norefors Anticipates Claims 1, 3, 5-8, 12-13, 15-
`27, 30-42, 44-45, 47-48, 50-52, and 54-55 While in the Alternative
`Norefors in View of Rajasekaran Renders Obvious These Claims. ....... 28 
`1.  Overview of Norefors .................................................................... 28 
`2.  Overview of Rajasekaran .............................................................. 33 
`
`3. 
`
`i
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`

`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`3.  Norefors Anticipates Claims 1, 3, 5-8, 12-13, 15-27, 30-42, 44-45,
`47-48, 50-52, and 53-55 in a First Construction, and Those Claims
`Also Are Rendered Obvious by Norefors in View of Rajasekaran
`using a Second, Narrower Construction ....................................... 34 
`C.  GROUNDS 3 and 4 - Norefors In View of Brown Renders Obvious
`Claims 2, 4, 9-11, 14, 28, 29, 43, 46, 49, and 53, While In the
`Alternative Norefors In View of Rajasekaran and Brown Renders
`Obvious Those Claims ............................................................................ 56 
`1.  Overview of Norefors, Rajasekaran, and Brown .......................... 56 
`2. 
`The Combination of Norefors and Brown Renders Obvious
`Claims 2, 4, 9-11, 14, 28, 29, 43, 46, 49, and 53, While in the
`Alternative the Combination of Norefors, Rajasekaran, and Brown
`Renders Obvious Those Claims .................................................... 58 
`IV.  CONCLUSION ............................................................................................ 66 
`
`
`
`ii
`
`

`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`
`EXHIBITS
`
`USAA-1001
`
`U.S. Patent No. 8,266,432 to Asghari-Kamrani et al. (“the ‘432
`Patent” or “‘432”)
`
`USAA-1002
`
`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
`Appln.” or “Child”)
`
`USAA-1014
`
`U.S. Patent Application Serial No. 11/239,046 (“the ‘046
`Appln.” or “Parent”)
`
`iii
`
`

`
`USAA-1015
`
`USAA-1016
`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`
`U.S. Patent No. 7,444,676 (“the ‘676 Patent” or “’676”)
`
`U.S. Patent Application Serial No. 09/940,635 (“the ‘635
`Appln.” 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
`
`USAA-1027
`
`
`
`United Services Automobile Association v. NADER ASGHARI-
`KAMRANI and KAMRAN ASGHARI-KAMRANI, IPR2015-
`01842, Paper 13
`
`United Services Automobile Association v. NADER ASGHARI-
`KAMRANI and KAMRAN ASGHARI-KAMRANI, IPR2015-
`01842, Paper 7
`
`iv
`
`

`
`USAA-1028
`
`USAA-1029
`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`
`PCT Application Publication WO2003021837 A1
`
`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
`
`
`
`
`
`
`
`v
`
`

`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`United Services Automobile Association (“Petitioner” or “USAA”) petitions
`
`for Covered Business Method Patent Review (“CBM”) under 35 U.S.C. § 321 and
`
`§ 18 of the Leahy-Smith American Invents Act of claims 1-55 (“the Challenged
`
`Claims”) of U.S. Patent No. 8,266,432 (“the ‘432 Patent”). As explained in this
`
`petition, USAA demonstrates a reasonable likelihood that at least one of the
`
`Challenged Claims is unpatentable. Indeed, the Challenged Claims are shown
`
`unpatentable based on teachings set forth in at least the references presented in this
`
`petition. Moreover, USAA respectfully requests institution of this CBM, and
`
`cancelation of the Challenged Claims as unpatentable.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R §§ 42.8(a)(1), 42.8(b)(1),
`42.8(b)(2), 42.8(b)(3) AND PAYMENT OF FEES UNDER 37 C.F.R §
`42.103
`Petitioner, USAA, is filing this Petition, and is the real party-in-interest.
`
`
`
`USAA is not aware of any disclaimers or reexamination certificates for the ‘432
`
`Patent. Inter Partes Review, under IPR2015-01842, was earlier requested based
`
`on grounds different than those presented in this petition; that petition was denied
`
`institution. USAA designates W. Karl Renner, Reg. No. 41,265, as Lead Counsel
`
`and Thomas Rozylowicz, Reg. No. 50,620, as Backup Counsel, both available for
`
`service at 3200 RBC Plaza, 60 South Sixth Street, Minneapolis, MN 55402 (T:
`
`202-783-5070) or via electronic service by email at CBM36137-0007CP1@fr.com.
`
`The Patent and Trademark Office is authorized to charge Deposit Account
`
`1
`
`

`
`No. 06-1050 for the fee set in 37 C.F.R. § 42.15(b).
`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`
`II. REQUIREMENTS FOR CBM UNDER 37 C.F.R. § 42.304
`A. Grounds for Standing Under 37 C.F.R. § 42.304(a)
`USAA certifies that the ‘432 Patent is available for CBM. The Patent
`
`Owner filed suit on October 30, 2015, in a case styled as Asghari-Kamrani et al. v.
`
`United Services Automobile Association, Case No. 2:15-cv-00478-RGD-LRL in
`
`the Eastern District of Virginia. USAA is not barred or estopped from requesting
`
`this review of the Challenged Claims on the following grounds.
`
`B. Challenge Under 37 C.F.R. § 42.304(b) and Relief Requested
`USAA requests a CBM review of the Challenged Claims on the grounds set
`
`forth in the table shown below, and requests that each of the Challenged Claims be
`
`found unpatentable. An explanation of how these claims are unpatentable under
`
`the statutory grounds identified below is provided in the form of detailed
`
`description and claim charts that follow, indicating where each element can be
`
`found in the cited prior art, and the relevance of that prior art. Ground 1 is
`
`proposed 102 rejections based on Norefors and Ground 3 is proposed 103
`
`rejections based on Norefors in view of Brown. No redundancy exists between the
`
`102 ground and the 103 ground. Relative to grounds 1 and 3, grounds 2 and 4
`
`include an additional Rajasekaren reference in the event that a narrower
`
`construction is used, demonstrating “a meaningful distinction in terms of relative
`
`strengths and weaknesses with respect to application of the prior art disclosures to
`
`2
`
`

`
`one or more claim limitations.” USAA-1038 at 4. Additional explanation and
`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`
`support for each ground of rejection is set forth in Exhibit 1003, Declaration of Dr.
`
`Seth Nielson (“Nielson”), referenced throughout this Petition.
`
`Ground
`
`‘432 Patent Claims
`
`Basis for Rejection
`
`Ground 1 1, 3, 5-8, 12-13, 15-27,
`30-42, 44-45, 47-48, 50-
`52, 54-55
`Ground 2 1, 3, 5-8, 12-13, 15-27,
`30-42, 44-45, 47-48, 50-
`52, 54-55
`Ground 3 2, 4, 9-11, 14, 28, 29,
`43, 46, 49, and 53
`Ground 4 2, 4, 9-11, 14, 28, 29,
`43, 46, 49, and 53
`
`§ 102: Norefors
`
`§ 103: Norefors in view of Rajasekaran
`
`§ 103: Norefors in view of Brown
`
`§ 103: Norefors in view of Rajasekaran
`and Brown
`
`The ‘432 Patent makes two priority claims that both are ineffective. First, it
`
`purports to be a direct continuation of its Grandparent (U.S. Patent Appl. No.
`
`11/239,046 (USAA-1014))1 despite the absence of copendency. Specifically, the
`
`application that issued as the ‘432 Patent was filed on Sept. 15, 2008, more than
`
`five (5) months after the Grandparent, had already issued as the ‘837 Patent on
`
`Apr. 8, 2008. Second, the ‘432 Patent purports to be a continuation of Appl. No.
`
`
`1 Petitioner uses the terms “Grandparent” and “Parent” for convenient reference to
`
`relative filing dates only. The ‘432 Patent’s priority claims to the “Grandparent”
`
`and to the “Parent,” directly or indirectly, are ineffective.
`
`3
`
`

`
`11/239,046 (“Parent”) (USAA-1014) which itself purports to be a continuation-in-
`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`
`part of the Grandparent. However, the purported Parent does not support the
`
`claims of the ‘432 Patent, as it neither incorporates the disclosure of the
`
`Grandparent by reference, nor does it provide written description support for the
`
`claims of the ‘432 Patent. Thus, as discussed in III.A., infra, the ‘432 Patent’s
`
`priority claim is fatally defective. Accordingly, the earliest possible date to which
`
`the ‘432 Patent can rely upon for purposes of priority (hereinafter, the “earliest
`
`effective filing date”) is Sept. 15, 2008, the date on which U.S. Patent Appl. No.
`
`12/210,926 (USAA-1013), i.e., the Child, was filed and from which the ‘432
`
`Patent issued.
`
`Norefors, Rajasekaran, and Brown all qualify as prior art under 35 U.S.C. §
`
`102(b) because Norefors, Rajasekaran, and Brown were published or issued
`
`respectively on May 24, 2006, May 1, 2003, and April 14, 1998, all of which are
`
`more than one year before the effective filing date of the ‘432 Patent.
`
`Accordingly, Norefors, Rajasekaran, and Brown are eligible under AIA §
`
`18(a)(1)(C) as prior art to challenge the validity of the ‘432 Patent under CBM
`
`review.
`
`C. Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`In accordance with 37 C.F.R. § 42.100(b), claims in an unexpired patent are
`
`given their broadest reasonable construction in light of the specification of the
`
`4
`
`

`
`patent in which the claims appear. For the purpose of this CBM review, the claim
`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`
`terms are presumed to take on their broadest reasonable interpretation (“BRI”) in
`
`view of the specification of the ‘432 Patent.2
`
`The ‘432 Patent relates to a system and method provided by a central-entity
`
`for centralized identification and authentication of users to increase security in the
`
`users’ transactions with external-entities in e-commerce. See ‘432, 2:52-55.
`
`Specifically, the ‘432 Patent describes a way to verify a transaction using a
`
`security code to help ensure the transaction is not fraudulent, and does so by—
`
`consistent with the title—centralizing the storage of authentication data. See ’432
`
`at 1:22-28. The system includes three different entities: (1) an “external entity” that
`
`
`2 Petitioner expressly reserves the right to advance different constructions in the
`
`matter now pending in the district court, as the applicable claim construction
`
`standard for that proceeding (“ordinary and customary meaning”) is different than
`
`the broadest reasonable interpretation standard applied in IPR. Further, due to the
`
`different claim construction standards in the proceedings, Petitioner identifying
`
`any feature in the cited references as teaching a claim term of the ‘432 Patent is not
`
`an admission by Petitioner that that claim term is met by any feature for
`
`infringement purposes, or that the claim term is enabled or meets the requirements
`
`for written description.
`
`5
`
`

`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`provides goods or services, (2) a “central entity,” that serves as a central repository
`
`for customer personal and financial data, and (3) a user who seeks to conduct a
`
`transaction with an “external entity.” See ’432 at Abstract, 2:10-26. The central
`
`entity receives a request for a code for a user during a transaction between the user
`
`and an external entity, generates the code, provides the code to the user, receives a
`
`request to authenticate the user from the external entity based on the user’s
`
`information and the code, and authenticates the user, providing a result to the
`
`external entity if validated. See ’432 at Claim 1.
`
`“Central-Entity” and “External-Entity” (1, 25, 48, 52)
`
`1.
`The terms “central-entity” and “external-entity” each is overtly defined by
`
`patentee in its specification. See ’432 at 2:13-16, 2:19-213(reproduced below).
`
`
`3 A district court, applying its standard of claim construction, may well find that the
`
`claimed “central entity” and “external entity” must be distinct entities given the
`
`lack of support in the specification for such entities being the same, that to make
`
`such entities the same would defy the purpose of the invention, and that it is not
`
`what the applicants regarded as their invention.
`
`6
`
`

`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`
`
`
`For purposes of this proceeding, governed by BRI, Petitioner construes these terms
`
`to include the definitions set forth above.
`
`2.
`
` “First Central-Entity Computer” and “Second Central-
`Entity Computer” (25, 52)
`
`Under BRI, these terms should be construed broadly enough to encompass
`
`the same components on a single server, as dependent claims 11 and 36 recite “said
`
`first central-entity computer and said second central-entity computer are the same”
`
`(emphasis added). See Nielson at ¶ 34. Petitioner notes the absence of support
`
`within the ‘432 specification for a first central-entity computer and second central-
`
`7
`
`

`
`entity computer that are distinct from each other.4 Id. (the word “computer” only
`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`
`appears in the claims and with reference to a “public computer network such as the
`
`Internet” in a discussion of related prior art).
`
`“Authenticating” (1, 25, 48, 52)
`
`3.
`Under BRI, this term should be construed consistent with (and broad enough
`
`to account for) remarks advanced by Patentee during prosecution, and thus, should
`
`include “a process by which the authenticator states [an] individual is who the
`
`individual says he is,” as set forth in the file wrapper of the ‘432 Patent. See
`
`USAA-1002, Resp. to Office Action on Nov. 12, 2010 at 15.
`
`“Transaction” (1, 25, 48, 52)
`
`4.
`Under BRI, this term should be construed to include “attempts [by a user] to
`
`access a restricted web site or attempts to buy services or products . . . through a
`
`standard interface provided by [an] External-Entity . . . and selects digital identity
`
`as his identification and authorization or payment option,” as described in the
`
`
`4 A district court, applying its standard of claim construction, may well find claims
`
`reciting these limitations lacking written description support.
`
`8
`
`

`
`specification of the ‘432 Patent.5 ‘432, 5:5-22; see also Nielson at ¶ 35.
`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`
`“Dynamic Code” (1, 25, 48, 52)
`
`5.
`Under BRI, this term should be construed to include a “dynamic, non-
`
`predictable and time dependent alphanumeric code, secret code, PIN or other code,
`
`which may be broadcast to the user over a communication network, and may be
`
`used as a part of a digital identity to identify a user as an authorized user,” as
`
`described in the specification of the ‘432 Patent. ‘432, 2:35-40; See Nielson at ¶
`
`36.
`
`D. The ‘432 Patent is a Covered Business Method Patent
`The ‘432 Patent, which generally relates to systems and methods “for
`
`identification and authorization of users” is a “covered business method patent”
`
`(“CBM patent”) as defined under § 18 of the AIA and 37 C.F.R. § 42.301.
`
`The AIA defines a CBM patent as “a patent that claims a method or
`
`corresponding apparatus for performing data processing or other operations
`
`used in the practice, administration, or management of a financial product or
`
`service” (emphases added). AIA § 18(d)(1); see also 37 C.F.R. § 42.301. The
`
`
`5 Petitioner notes that a district court, applying its standard of claim construction,
`
`would properly find that the claim terms must be construed no more broadly than
`
`Patent Owners argued in their Prelim. Resp. filed in IPR2015-01842. USAA-1027.
`
`9
`
`

`
`USPTO recognizes that the AIA’s legislative history demonstrates that the term
`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`
`“financial product or service” should be “interpreted broadly,” encompassing
`
`patents “’claiming activities that are financial in nature, incidental to a financial
`
`activity or complementary to a financial activity.’” USAA-1006 at 48735 (quoting
`
`157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer)).
`
`Moreover, as the Guide to the Legislative History of the America Invents Act
`
`indicates, the language “practice, administration, or management” is “intended to
`
`cover any ancillary activities related to a financial product or service,
`
`including . . . marketing, customer interfaces [and] management of data . . .”
`
`(emphases added). USAA-1007 at 635-36.
`
`Augmenting the statutory language with the above-referenced clarifications
`
`from the legislative history, and from the Guide to that legislative history, yields
`
`the following definition of a CBM patent: a patent that claims a method or
`
`corresponding apparatus for performing data processing or other operations used in
`
`activities that are financial in nature, incidental to a financial activity, or
`
`complementary to a financial activity, including the management of data. See AIA
`
`§ 18(d)(1); USAA-1006 at 48735; and USAA-1007 at 635-26.
`
`In the words of the Patent Owner, the claims of the ‘432 Patent are directed
`
`to “a Central-Entity for centralized identification and authentication of users and
`
`their transactions to increase security and e-commerce.” See ‘432 at 2:51-3:6
`
`10
`
`

`
`(emphasis added). Claim 1, for example, recites “a method for authenticating a
`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`
`user during an electronic transaction” that includes “receiving electronically . . . a
`
`request for authenticating the user . . . based on a user-specific information and [a]
`
`dynamic code as a digital identity.” See ‘432 at claim 1. Claim 4, which depends
`
`from claim 1, adds that “the transaction corresponds to a financial transaction.”
`
`See ‘432 at 7:12-14 (emphasis added).
`
`The method for authenticating a user of claim 1 is used for data processing
`
`in the practice, administration, and management of financial products and services;
`
`specifically, for processing user financial information for electronic purchases.
`
`Notably, in several recent decisions involving similar claims, the Board determined
`
`that authenticating users during a transaction are incidental to financial activity.
`
`See e.g.,USAA-1009 at 13 (finding “alternative embodiments of the invention []
`
`disclosed as being used by financial institutions . . . and used in commerce”),
`
`USAA-1025 (finding that “[b]anking is financial activity” and that “banking is a
`
`field where protection against unauthorized access to databases that are used for
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`administering and storing sensitive information is desired.”).
`
`The specification of the ‘432 Patent is replete with further examples of the
`
`invention being used in the context of financial services, stating e.g., that
`
`“[e]xamples of Central-Entity are banks, credit card issuing companies or
`
`intermediary service companies” and provide “centralized identification of users to
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`11
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`allow them to purchase goods and services from an External-Entity using their
`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`
`digital identity.” See ‘432 at 2:13-18, 3:35-40 (emphasis added). As noted earlier,
`
`the specification also explains, the claims pertain to “transactions to increase
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`security in e-commerce,” and “for centralized identification and authentication of
`
`users” using “personal or financial information.” See ‘432 at 2:54-3:40. In the
`
`words of the Patent Owner, the principal object of the claimed method is to “offer
`
`[a] digital identity to the users for identification in e-commerce.” See ‘432 at
`
`3:41-42 (emphasis added). Thus, for at least the reasons described above, the ‘432
`
`Patent is a CBM patent that is available for the review requested by Petitioner.
`
`E.
`
`The ‘432 Patent Is Not Directed to a Technological Invention, And
`Thus, Should Not Be Excluded From the Definition of a CBM
`Patent.
`The AIA excludes “patents for technological inventions” from the definition
`
`of CBM patents. AIA § 18(d)(2). To determine when a patent covers a
`
`technological invention, “the following will be considered on a case-by-case basis:
`
`whether the claimed subject matter as a whole recites a technological feature that is
`
`novel and unobvious over the prior art; and solves a technical problem using a
`
`technical solution.” 37 C.F.R. § 42.301 (emphasis added); see also USAA-1006 at
`
`48736-37 (USPTO clarified that to qualify as a technological invention, a patent
`
`must have a novel, unobvious technological feature and a technical problem
`
`solved by a technical solution). “[A]bstract business concepts and their
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`12
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`implementation, whether in computers or otherwise,” are not included in the
`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`
`definition of “technological inventions.” USAA-1007 at 634. Indeed, Congress
`
`has explained that accomplishing a business process or method is not
`
`technological, whether or not that process or method is novel. See id. Finally, to
`
`institute a CBM, a patent need only have one claim directed to a covered business
`
`method, and not a technological invention. See e.g., USAA-1006 at 48736-37.
`
`The claims of the ‘432 Patent recite neither a novel and unobvious
`
`technological feature nor a technical problem solved by a technical solution. See
`
`Nielson at ¶ 27. Although the independent claims of the ‘432 Patent recite
`
`computer-related terms such as “computer” and “communication network,”
`
`Congress has explained that claim drafting techniques such as “[m]ere recitation of
`
`known technologies, such as computer hardware, communication or computer
`
`networks, software, memory, computer-readable storage medium, scanners,
`
`display devices or databases, or specialized machines, such as an ATM or point of
`
`sale device” do not, on their own, render the claims a “technological invention.”
`
`USAA-1006 at 48,756, 48,763–64, see also USAA-1007 at 634, USAA-1002
`
`Office Action on May 5, 2010 at 9-10, and Dec. 1, 2009 at 9-10 (unrebutted
`
`Official Notice characterizing “key, passphrase, pass-code, or a digital identifier
`
`made of combination of numbers and characters” as “old and well-known practice
`
`in the art.”).
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`13
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`

`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`
`The specification of the ‘432 Patent confirms that the computer-related
`
`terms cited in the ‘432 Patent’s claims simply relate to technology that is merely,
`
`in the words of the Patent Owner, “standard.” See, e.g., ‘432 at 5:5-10 (describing
`
`that “the user 10 attempts to access a restricted web site or attempts to buy services
`
`or products 110, as illustrated in FIG. 4, through a standard interface provided by
`
`the External-Entity 20, similar to what exists today and selects digital identity as
`
`his identification and authorization or payment option”) (emphasis added), 4:67-
`
`5:4 (“The user 10 registers at the Central-Entity 30, 100, 104 and receives his
`
`account and login information such as UserName and Password 108. User 10 can
`
`access his account at any time by accessing the Central-Entity’s system using a
`
`communication network 50 and logging into the system.”).
`
`Moreover, the claims of the ‘432 Patent are not transformed into a
`
`technological invention by mere recitation of generic computer-related terms. See
`
`Nielson at, e.g. ¶ 28. The ’432 Patent does not even recite a technical problem, and
`
`instead addresses the non-technical tasks of allowing users “to participate in e-
`
`commerce without worrying about [] privacy and security” and “be[ing] simple for
`
`businesses to adopt and also doesn’t require the financial institutions to change
`
`their existing systems.” ‘432 at 1:60-2:4. To “keep merchants, service providers,
`
`Internet sites and financial institutions satisfied by positively identifying and
`
`authenticating the users,” ‘432 at 3:47-49, the specification touts the use of “digital
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`14
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`

`
`identity” as “a combination of [the] user’s ‘SecureCode’6 and user’s information.”
`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`
`‘432, 2:35-44. The purported solution in the ‘432 Patent to this non-technical
`
`problem is thus nothing more than an application of well-known art to achieve a
`
`normal, expected, and predictable result: the use of user-provided personal and
`
`financial information to a financial institution for user identification and
`
`authentication. See e.g., ‘432 at Abstract, 1:61-2:4; Nielson at, e.g., ¶ 29. A
`
`teaching of applying well-known art that achieves a predictable result does not
`
`“render a patent a technological invention.” USAA-1006 at 48755. Indeed, “[a]
`
`person having ordinary skill in the art at the time that the ‘432 Patent was filed
`
`(PHOSITA) would not have considered the methods described and claimed by the
`
`‘432 Patent to be technical.” Nielson at, e.g., ¶ 29. Insofar as claim 1 recites “[a]
`
`method for authenticating a user during an electronic transaction between the user
`
`and an external-entity” that includes “generating by the central-entity during the
`
`transaction a dynamic code for the user in response to the request,” (‘432, 6:24-
`
`34), it does not even require the claimed operations to be performed by a computer.
`
`See Nielson at, e.g., ¶ 30, ‘432 at 2:10-26; see also II.C.1, supra. In the historical
`
`context of the banking industry where transactions were typically performed using
`
`
`6 The SecureCode is preferably implemented through the use of an indicator
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`[which] has two states: ‘on’ for valid and ‘off’ for invalid.” ‘432, 5:62-64.
`
`15
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`

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`a pencil-and-paper on a ledger, the claim language reinforces the non-technical
`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`
`nature of the purported invention, even when generic components are recited. See
`
`Accenture Global Services, GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
`
`1342 (Fed. Cir. 2013) (noting that “for generating tasks to be performed in an
`
`insurance organization,” these “components [an insurance claim folder, a task
`
`library database, a server component, and a task engine] are all present in the
`
`method claims, albeit without a specific reference to those components by name.”).
`
`The AIA’s exclusion of “patents for technological inventions” from the
`
`definition of CBM patents is not applicable here because the ‘432 Patent fails to
`
`recite a novel and unambiguous feature, and fails to recite a technical problem
`
`solved by a technical solution. CBM review is appropriate for the ‘432 Patent.
`
`III. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘432 PATENT IS UNPATENTABLE
`As detailed below, this petition shows a reasonable likelihood that the
`
`Requester will prevail with respect to the Challenged Claims of the ‘432 Patent.
`
`A. The Effective Priority Date for the ‘432 Patent is Sept. 15, 2008,
`Because the Parent Fails to Provide Written Description Support
`for the Claims of the ‘432 Patent
`The ‘432 Patent makes two priority claims and they both are ineffective.
`
`First, the ‘432 patent purports to be a direct continuation of its Grandparent despite
`
`the absence of copendency. See ‘432 Patent at 1:9-17. Specifically, the
`
`application that issued as the ‘432 Patent (Ser. No. 12/210,926, the “Child”) was
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`16
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`

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`filed on Sept. 15, 2008, more than five (5) months after the Grandparent had
`
`Attorney Docket No. 36137-0007CP1
`Petition for CBMR of U.S. Patent No. 8,266,432
`
`
`already issued as the ‘837 Patent on Apr. 8, 2008. See ‘837; ‘432 at 1:14-17.7
`
`Thus, ‘the ‘432 Patent’s claim to priority as a continuation of the Grandparent is
`
`improper and the ‘432 Patent does not receive priority to the filing date of the
`
`Grandparent.
`
`Second, the