`571-272-7822
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` Paper No. 14
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` Entered: September 21, 2016
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`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 B2
`____________
`
`
`
`
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
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`CBM2016-00063
`Patent 8,266,432 B2
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`
`INTRODUCTION
`I.
`United Services Automobile Association (“Petitioner”) filed a Petition
`requesting a review of claims 1–55 of U.S. Patent No. 8,266,432 B2
`(Ex. 1001, “the ’432 patent”) under the transitional program for covered
`business method patents.1 Paper 2, “Pet.” Nader Asghari-Kamrani and
`Kamran Asghari-Kamrani (collectively, “Patent Owner”) filed a Preliminary
`Response to the Petition. Paper 11, “Prelim. Resp.” Pursuant to our prior
`authorization (Paper 10, 9), Petitioner filed a Reply to the Preliminary
`Response. Paper 13, “Reply.”
`Under 35 U.S.C. § 324(a), a covered business method patent review
`may not be instituted unless the information presented in the petition, if
`unrebutted, “would demonstrate that it is more likely than not that at least 1
`of the claims challenged in the petition is unpatentable.” Because Patent
`Owner filed a statutory disclaimer of claims 4 and 29, pursuant to 37 C.F.R.
`§ 1.321(a) (Prelim. Resp. 14; Ex. 2001), we decline to institute a review
`based on disclaimed claims 4 and 29. See 37 C.F.R. § 42.207(e) (“No post-
`grant review will be instituted based on disclaimed claims.”).
`For the reasons that follow, we institute a covered business method
`patent review as to claims 1–3, 5–28, and 30–55 (the “challenged claims”)
`of the ’432 patent.
`
`
`1 See § 18(a) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284, 329 (2011) (“AIA”).
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`2
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`A. Related Matters
`The parties indicate that the ’432 patent is involved in
`Asghari-Kamrani et al. v. United Services Auto. Ass’n, Case No. 2:15-cv-
`00478-RGD-LRL (E.D. Va.), and IPR2015-01842, which has been denied
`institution. Pet. 2; Paper 5, 2. Petitioner also filed another Petition
`challenging the ’432 patent in CBM2016-00064, in which we concurrently
`enter a Decision on Institution. CBM2016-00064, Paper 14.
`
`B. The ’432 Patent
`The ’432 patent relates to “a system and method provided by a
`Central-Entity for centralized identification and authentication of users and
`their transactions to increase security in e-commerce.” Ex. 1001, 2:52–55.
`A central-entity is said to allow a user to purchase goods and services from
`an external-entity (e.g., a merchant) using the user’s digital identity without
`revealing confidential personal or financial information, by generating a
`dynamic, non-predictable and time-dependable secure code for the user per
`the user’s request. Id. at 3:35–40. Examples of central-entities include
`banks and credit card issuing companies. Id. at 2:16–18. In a transaction
`between the user and the external-entity, the user presents his user name and
`secure code as a digital identity to the external-entity for identification. Id.
`at Abs., 2:19–21, 3:19–21, 4:55–58. The external-entity depends on the
`central-entity to identify and authenticate the user and transaction. Id.
`
`3
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`C. Illustrative Claim
`Of the challenged claims, claims 1, 25, 48, and 52 are independent.
`Claims 2, 3, and 5–24 depend ultimately from claim 1; claims 26–28 and
`30–47 depend either directly or indirectly from claim 25; claims 49 and 50
`depend directly from claim 48; and claims 53–55 depend directly from
`claim 52. Claim 1, reproduced below, is illustrative:
`1. A method for authenticating a user during an electronic
`transaction between the user and an external-entity, the method
`comprising:
`receiving electronically a request for a dynamic code for the user
`by a computer associated with a central-entity during the
`transaction between the user and the external-entity;
`generating by the central-entity during the transaction a dynamic
`code for the user in response to the request, wherein the dynamic
`code is valid for a predefined time and becomes invalid after
`being used;
`providing by the computer associated with the central-entity said
`generated dynamic code to the user during the transaction;
`receiving electronically by the central-entity a request for
`authenticating the user from a computer associated with the
`external-entity based on a user-specific information and the
`dynamic code as a digital identity included in the request which
`said dynamic code was received by the user during the
`transaction and was provided to the external-entity by the user
`during the transaction; and
`authenticating by the central-entity the user and providing a
`result of the authenticating to the external-entity during the
`transaction if the digital identity is valid.
`Ex. 1001, 6:24–47 (emphasis added).
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`D. Standing to Seek a Covered Business Method Patent Review
`Section 18 of the AIA governs covered business method patent
`reviews. Section 18(a)(1)(B) of the AIA limits such reviews to persons or
`their privies that have been sued or charged with infringement of a covered
`business method patent. Here, Petitioner certifies that it has been sued for
`infringement of the ’432 patent in Asghari-Kamrani et al. v. United Services
`Auto. Ass’n, Case No. 2:15-cv-00478-RGD-LRL (E.D. Va.). Pet. 2. On this
`record, we are persuaded that Petitioner has been sued for infringement for
`purposes of AIA § 18(a)(1)(B).
`
`1. Financial Product or Service
`A “covered business method patent” is 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, except that the term does not include patents for
`technological inventions.” AIA § 18(d)(1). The legislative history of the
`AIA “explains that the definition of covered business method patent was
`drafted to encompass patents ‘claiming activities that are financial in nature,
`incidental to a financial activity or complementary to a financial activity.’”
`Transitional Program for Covered Business Method Patents—Definitions of
`Covered Business Method Patent and Technological Invention, 77 Fed. Reg.
`48,734, 48,735 (Aug. 14, 2012) (Final Rule) (quoting 157 CONG. REC.
`S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer)). The
`legislative history indicates that “financial product or service” should be
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`interpreted broadly. Id. A patent is eligible for review if it has at least one
`claim directed to a covered business method. 77 Fed. Reg. at 48,736
`(Response to Comment 8).
`Here, Petitioner takes the position that the ’432 patent is a covered
`business method patent, arguing that 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.” Pet. 9–12. According
`to Petitioner, 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.” Id. at 10–11 (citing
`Ex. 1001, 2:51–3:6). Petitioner explains that claim 1 is directed to a method
`for authenticating a user during a transaction between the user and an
`external-entity, and dependent claim 4 (subsequently disclaimed) requires
`that the transaction be a financial transaction. Id.; Ex. 1001, 6:24–47, 6:61–
`62.
`
`Patent Owner counters that the claims of the ’432 patent are not
`directed to a financial product or service, arguing that the challenged claims
`do not contain “a single element related to a ‘financial product or service.’”
`Prelim. Resp. 9–21 (emphasis omitted). According to Patent Owner, the
`claims are “of ‘general utility,’ i.e., they recite a particular novel technique
`for authenticating a user during an electronic transaction between the user
`and an external-entity without restricting the field of use of the claimed
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`invention to the financial sector or financial activity.” Id. at 12–21. Patent
`Owner also urges us not to consider disclaimed claims 4 and 29. Id. at 14.
`Upon consideration of the parties’ contentions and supporting
`evidence, we are not persuaded by Patent Owner’s arguments. Rather, we
`determine that Petitioner has established sufficiently that at least claim 1 of
`the ’432 patent recites a method for performing data processing or other
`operations used in the practice, administration, or management of a financial
`product or service.
`Claim 1 recites a method “for authenticating a user during an
`electronic transaction between the user and an external-entity”2 and requires
`each recited method step to be performed “during the transaction.”
`Ex. 1001, 6:24–26 (emphases added). Turning to the Specification of the
`’432 patent to assess the scope of that language, we note that the
`Specification consistently describes the “electronic transaction between the
`user and an external-entity” in a financial context for purchasing goods or
`services in e-commerce. See, e.g., id. at 1:22–25; 1:61–65; 2:52–55. The
`Specification expressly defines the claim term “user” to “represent both a
`typical person consuming goods and services as well as a business
`consuming goods and services.” Id. at 2:10–12 (emphases added). The
`Specification also explicitly defines the claim term “external-entity” as “any
`party offering goods or services that users utilize by directly providing their
`
`
`2 The parties, at this juncture, do not dispute that the preamble of each
`independent claim is a claim limitation. For purposes of this decision, we
`proceed on the assumption that it is.
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`UserName and SecureCode as digital identity.” Id. at Abs.; 2:19–21
`(emphasis added). In fact, the Specification specifically explains that the
`purported “invention relates to a system and method provided by a
`Central-Entity for centralized identification and authentication of users and
`their transactions to increase security in e-commerce,” allowing the users “to
`purchase goods and services from an External-Entity using their digital
`identity, preferably without revealing confidential personal or financial
`information.” Id. at 2:52–55, 3:35–40 (emphases added). Examples of
`Central-Entities include banks and credit card issuing companies. Id. at
`2:16–18. In short, the claimed “electronic transaction between the user and
`an external-entity” encompasses sales of goods or services in e-commerce,
`and the terms “user” and “external-entity,” as Patent Owner has expressly
`defined them in the Specification, show that claim 1 pertains to the offering,
`and consumption, of goods and services via an electronic transaction
`between two parties.
`Significantly, sales of goods or services in e-commerce are activities
`that are financial in nature, and allowing secured electronic sales
`transactions amounts to providing a financial service. See SightSound
`Techs., LLC v. Apple Inc., 809 F.3d 1307, 1315 (Fed. Cir. 2015) (a financial
`activity (e.g., electronic sales of digital audio) not directed to money
`management or banking can constitute a “financial product or service”
`within the meaning of the statute). Therefore, claim 1 of the ’432 patent
`recites a method for performing data processing or other operations used in
`the practice, administration, or management of a financial service.
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`We are not persuaded by Patent Owner’s argument that the challenged
`claims are “of ‘general utility’ . . . without restricting the field of use of the
`claimed invention to the financial sector or financial activity.” Prelim.
`Resp. 12. Although we do not consider disclaimed claims 4 and 29, we
`nevertheless focus on the particular language of claim 1 to determine its full
`scope, as construed in light of the Specification. See Blue Calypso LLC v.
`Groupon, Inc., 815 F.3d 1331, 1338–40 (Fed. Cir. 2016). As discussed
`above, the Specification of the ’432 patent consistently describes its
`purported invention as directed to a method and system for allowing secured
`electronic sales transactions in e-commerce, and expressly provides
`definitions for several claim terms that are financial in nature. Ex. 1001,
`2:10–55, 3:35–40. Claim 1, as construed in light of the Specification,
`encompasses transactions of purchasing goods or services by a consumer
`from a party offering goods or services.
`Moreover, we decline to apply an exclusivity test, as urged by the
`Patent Owner, in view of the legislative history indicating that the definition
`of “covered business method patent” should be interpreted broadly “to
`encompass patents claiming activities that are financial in nature, incidental
`to a financial activity or complementary to a financial activity.” See 77 Fed.
`Reg. at 48,735 (quoting 157 CONG. REC. S5432 (daily ed. Sept. 8, 2011)
`(statement of Sen. Schumer)); see also Sally Beauty Holdings, Inc. v.
`Intellectual Ventures I LLC, Case CBM2016-00029, slip op. at 7–8 (PTAB
`Aug. 2, 2016) (Paper 12) (explaining that, given the legislative history of the
`AIA, an “exclusive to the financial sector” test is not a proper inquiry in
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`determining whether a patent is eligible for a covered business method
`patent review). More importantly, our reviewing court has “declined to limit
`the application of CBM review to patent claims tied to the financial sector.”
`Blue Calypso, 815 F.3d at 1338; see also Versata Dev. Grp. Inc. v. SAP Am.,
`Inc., 793 F.3d 1306, 1325 (Fed. Cir. 2015) (concluding that the statute “on
`its face covers a wide range of finance-related activities” and that “the
`definition of ‘covered business method patent’ is not limited to products and
`services of only the financial industry, or to patents owned by or directly
`affecting the activities of financial institutions such as banks and brokerage
`houses”).
`For the foregoing reasons, we determine that Petitioner has
`demonstrated sufficiently that claim 1 of the ’432 patent is directed to a
`method for performing data processing used in the practice, administration,
`or management of a financial product or service. Consequently, the ’432
`patent satisfies the “financial product or service” component of the
`definition for a covered business method patent under § 18(d)(1) of the AIA.
`
`2. Technological Invention Exception
`The definition of “covered business method patent” in § 18(d)(1) of
`the AIA excludes patents for “technological inventions.” When determining
`whether a patent is excluded under this exception, we consider “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(b). Both prongs must be satisfied
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`in order for the patent to be excluded as a technological invention. See 157
`CONG. REC. S1364 (daily ed. Mar. 8, 2011) (Sen. Schumer stated the
`“‘technological invention’ exception only excludes those patents whose
`novelty turns on a technological innovation over the prior art and are
`concerned with a technical problem which is solved with a technical
`solution”) (emphases added). Therefore, a patent would not be excluded as
`a technological invention if one of the prongs is deficient.
`The following claim drafting techniques, for example, typically do not
`render a patent a technological invention:
`(a) Mere 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.
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method
`is novel and non-obvious.
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763–64
`(Aug. 14, 2012).
`Here, Petitioner asserts that the ’432 patent is not directed to a
`technological invention, and, thus, should not be excluded from the
`definition of a covered business method patent. Pet. 12–16. In Petitioner’s
`view, the Specification confirms that the computer-related limitations recited
`in the claims are merely standard computer features. Id. at 14 (citing
`Ex. 1001, 5:5–10, 4:67–5:4).
`
`11
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`Patent Owner counters that the claimed subject matter as a whole
`recites a technological invention, arguing that the claims recite novel and
`non-obvious technological features and provide a technical solution to a
`technical problem. Prelim. Resp. 21–36. In particular, Patent Owner alleges
`that Petitioner’s failure to establish that the claims were anticipated or
`obvious in IPR2015-01842, involving the same challenged claims, confirms
`that the claims are novel and unobvious. Id. at 22.
`However, the prior art of record here is materially different from the
`prior art in IPR2015-01842. Here, in contrast to that record, Petitioner has
`demonstrated, as discussed below, that it is more likely than not that the
`challenged claims are unpatentable based on the prior art of record in the
`instant proceeding. Therefore, the failure to establish unpatentability in the
`prior proceeding does not support Patent Owner’s contention here that the
`claims recite novel and non-obvious technological features.
`Patent Owner also alleges that the following claim elements are novel
`technological features: a centralized authentication system (central-entity),
`the digital identity (user specific information and dynamic code), and the
`communication between the centralized system, external-entity, and user
`during a transaction. Id. at 31–36. As discussed below, however, these
`features appear to have been known in the art, in light of the prior art in this
`record. See, e.g., Ex. 1032. Indeed, they merely utilize generic computers.
`See Ex. 1001, 6:27–30 (“a computer associated with a central-entity”). And,
`using user specific information (e.g., a user name) and a dynamic code (e.g.,
`a one-time password) for authenticating a user was known in the art at the
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`time of the invention. See, e.g., Ex. 1032 ¶¶ 9, 48. Reciting the use of
`known prior art features to perform a method does not render a patent a
`technological invention. Moreover, Petitioner explains sufficiently why
`claim 1, as a whole, does not recite a technological feature that is novel and
`non-obvious over the prior art of record. Pet. 28–56 (explaining how
`claim 1, as a whole, is anticipated by Norefors). Claim 1 is merely the
`recitation of known technologies to perform a method, which indicates that
`it is not a patent for a technological invention. See Office Patent Trial
`Practice Guide, 77 Fed. Reg. at 48,764 (examples (a) and (b), which are
`reproduced above).
`In view of the foregoing, we are persuaded by Petitioner’s explanation
`that claim 1, as a whole, does not recite a technological feature that is novel
`and non-obvious over the prior art. See Pet. 12–16, 28–44. Because one of
`the prongs set forth in 37 C.F.R. § 42.301(b), for determining whether a
`patent is a technological invention, is deficient, it is not necessary for us to
`address the parties’ arguments regarding whether the claimed subject matter
`solves a technical problem using a technical solution. Pet. 14–16; Prelim.
`Resp. 23–31. Accordingly, the ’432 patent is not excluded as a
`technological invention.
`
`3. Conclusion
`For the foregoing reasons, we conclude that the ’432 patent is a
`covered business method patent under AIA § 18(d)(1) and is eligible for
`review using the transitional covered business method patent program.
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`E. Prior Art Relied Upon
`Petitioner relies upon the following prior art references:
`
`(Ex. 1032)
`Norefors US 2006/0094403 A1 May 4, 2006
`(filed Dec. 12, 2005; continuation of application filed June 18, 2003)
`
`Brown
`
`(Ex. 1036)
`Rajasekaran US 2003/0080183 A1 May 1, 2003
`(filed Oct. 31, 2001)
`
`Apr. 14, 1998
`
`(Ex. 1035)
`
`US 5,740,361
`
`
`
`F. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 3):
`
`Challenged Claims
`1, 3, 5–8, 12, 13, 15–27, 30–42,
`44, 45, 47, 48, 50–52, 54, and 55
`
`Basis
`
`Reference(s)
`
`§ 102(b)3 Norefors
`
`1, 3, 5–8, 12, 13, 15–27, 30–42,
`44, 45, 47, 48, 50–52, 54, and 55
`
`§ 103(a) Norefors and
`Rajasekaran
`
`2, 9–11, 14, 28, 43, 46, 49, and 53
`
`2, 9–11, 14, 28, 43, 46, 49, and 53
`
`§ 103(a) Norefors and Brown
`§ 103(a) Norefors, Rajasekaran,
`and Brown
`
`
`3 Because the challenged claims have a filing date prior to March 16, 2013,
`the effective date of AIA, we apply the pre-AIA version of 35 U.S.C. §§ 102
`and 103 in this Decision.
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`II. ANALYSIS
`A. Claim Construction
`In a covered business method patent review, claim terms in an
`unexpired patent are interpreted according to their broadest reasonable
`construction in light of the specification of the patent in which they appear.
`37 C.F.R. § 42.300(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2144–46 (2016) (adopting the broadest reasonable interpretation standard
`was a reasonable exercise of the Office’s rulemaking authority). Under the
`broadest reasonable interpretation standard, claim terms generally are given
`their ordinary and customary meaning, as would be understood by one of
`ordinary skill in the art in the context of the entire disclosure. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor
`may rebut that presumption by providing a definition of the term in the
`specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Here, the Specification of the ’432 patent expressly sets forth
`definitions (reproduced below) for the following claim terms:
`
`Claim Term
`
`Definition as set forth in Specification
`
`“user”
`
`“external-entity”
`
`a person or business consuming goods and services
`(Ex. 1001, 2:10–12)
`
`any party offering goods or services that users
`utilize by directly or indirectly providing their
`UserName and SecureCode as digital identity (id. at
`2:19–26)
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`Claim Term
`
`“central-entity”
`
`“digital identity”
`
`Definition as set forth in Specification
`any party that has a user’s personal and/or financial
`information, UserName, and Password, and
`generates a dynamic, non-predictable and time
`dependable SecureCode for the user (id. at 2:13–16)
`
`“SecureCode” is defined as any 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 part of a digital
`identity to identify a user as an authorized user
`(id. at 2:35–40)
`
`a combination of a user’s SecureCode and the user’s
`information such as UserName, which may result in
`a dynamic, non-predictable and time dependable
`digital identity that could be used to identify a user
`as an authorized user (id. at 2:41–45)
`
`For purposes of this Decision, we interpret the terms above in
`accordance with their definitions in the Specification. Petitioner also
`proposes constructions for several other claim terms. Pet. 4–9. At this
`juncture, Patent Owner does not proffer any proposed claim constructions.
`Prelim. Resp. 36–37. Nor does it challenge Petitioner’s proposed claim
`constructions. Id. We note that only those claim terms and elements which
`are in controversy need to be construed, and only to the extent necessary to
`resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999). For purposes of this Decision, we find
`it necessary to address only the claim term “dynamic code.”
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`“dynamic code”
`The claim term “dynamic code” appears in claims 1, 25, 48, and 52.
`For instance, claim 1 recites “receiving electronically a request for a
`dynamic code for the user by a computer associated with a central-entity
`during the transaction between the user and the external-entity.” Ex. 1001,
`6:27–30 (emphasis added). Petitioner proposes to construe the claim term
`“dynamic code” 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.” Pet. 9.
`However, Petitioner’s proposed construction of “dynamic code,”
`which itself uses the adjective “dynamic” and includes “PIN or other code,”
`would render the word “dynamic” in the claim term “dynamic code”
`insignificant, if not wholly superfluous. We decline to adopt such a claim
`construction because “[c]laims are interpreted with an eye toward giving
`effect to all terms in the claim.” Cat Tech LLC v. TubeMaster, Inc., 528
`F.3d 871, 885 (Fed. Cir. 2008) (quotation omitted); see also Aristocrat
`Techs. Australia Pty Ltd. v. Int’l Game Tech., 709 F.3d 1348, 1356–57 (Fed.
`Cir. 2013) (declining to adopt the appellants’ proposed construction because
`it would render another limitation “superfluous”); cf. Microsoft Corp. v.
`Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (noting that the
`Board may not “construe claims during IPR so broadly that its constructions
`are unreasonable under general claim construction principles”).
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`Moreover, Petitioner’s proposed construction for the claim term
`“dynamic code” is the definition for the term “SecureCode” in the
`Specification of the ’432 patent, and it is not a definition for the claim term
`“dynamic code.” Ex. 1001, 2:35–40. As defined, a SecureCode could be a
`dynamic code or “PIN or other code,” but that definition does not support
`Petitioner’s proposed claim construction that a dynamic code may merely be
`a “PIN or other code.”
`In the context of the challenged claims, a dynamic code is generated
`and used for authenticating a user in response to the user’s request during a
`transaction between the user and an external-entity. See, e.g., Ex. 1001,
`6:31–35. On this record, we construe the claim term “dynamic code” to
`encompass an “alphanumeric code that is non-predictable and time
`dependent, 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,” in light of the Specification and claim language.
`
`B. Principles of Law
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference. Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). It is
`well settled that “the reference need not satisfy an ipsissimis verbis test.” In
`re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831,
`832–33 (Fed. Cir. 1990). In an anticipation analysis, “it is proper to take
`into account not only specific teachings of the reference but also the
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`inferences which one skilled in the art would reasonably be expected to draw
`therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968); In re Graves, 69
`F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it
`discloses the claimed invention ‘such that a skilled artisan could take its
`teachings in combination with his own knowledge of the particular art and
`be in possession of the invention.’” (citation and emphasis omitted)). Prior
`art references must be “considered together with the knowledge of one of
`ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed.
`Cir. 1994) (quoting In re Samour, 571 F.2d 559, 562 (CCPA 1978)).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`C. Level of Ordinary Skill
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
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`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). Petitioner’s declarant, Seth Nielson, Ph.D., testifies that a
`person with ordinary skill in the art “would have had a Bachelor of Science
`Degree in Electrical Engineering, Computer Engineering, or Computer
`Science with related work experience.” Ex. 1003 ¶ 26. Based on the current
`record, we agree and apply that level of ordinary skill in the art for purposes
`of this Decision. We further note that the prior art of record in the instant
`proceeding reflects the appropriate level of ordinary skill in the art. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (“the prior
`art itself reflects an appropriate level” of ordinary skill in the art).
`
`D. Effective Filing Date of the ’432 Patent
`The parties dispute whether the ’432 patent is entitled to the benefit of
`an earlier effective filing date of August 29, 2001. Pet. 16–28; Prelim. Resp.
`37–76; Reply 1–5. Here, following Petitioner’s showing that Norefors and
`Rajasekaran constitute prior art relative to the actual filing date of the ’432
`patent, the burden of production shifted to Patent Owner to show that the
`challenged claims of the ’432 patent are entitled to the benefit of the earlier
`effective filing date, prior to the relevant dates of Norefors and Rajasekaran.
`See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1380
`(Fed. Cir. 2015) (“The burden of production then shifted to [Patent Owner]
`to argue or produce evidence that either [the reference] does not actually
`anticipate, or, as was argued in this case, that [the reference] is not prior art
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`because the asserted claims in the [involved] patent are entitled to the benefit
`of a filing date (constructive or otherwise) prior to the filing date of [the
`reference].”); see also PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d
`1299, 1305 (Fed. Cir. 2008) (“When neither the PTO nor the board has
`previously considered priority, there is simply no reason to presume that
`claims in a [continuation-in-part] application are entitled to the effective
`filing date of an earlier filed application.”).
`The application that issued as the ’432 patent has an actual filing date
`of September 15, 2008. Ex. 100