Tria1s@uspto. gov
`571-272-7822
`
`Paper 10
`Entered: September 9, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PNC BANK, NATIONAL ASSOCIATION, U.S. BANK, NATIONAL
`
`ASSOCIATION, and U.S. BANCORP,
`
`Petitioner,
`
`V.
`
`SECURE AXCESS, LLC,
`Patent Owner.
`
`Case CBM2014-00100
`
`Patent 7,631,191 B2
`
`Before BARBARA A. BENOIT, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`Institution of Covered Business Method Patent Review
`
`DECISION
`
`37 C.F.R. § 42.208
`
`1
`
`USAA 1009
`
`1
`
`USAA 1009
`
`
`571-272-7822
`
`Paper 10
`Entered: September 9, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PNC BANK, NATIONAL ASSOCIATION, U.S. BANK, NATIONAL
`
`ASSOCIATION, and U.S. BANCORP,
`
`Petitioner,
`
`V.
`
`SECURE AXCESS, LLC,
`Patent Owner.
`
`Case CBM2014-00100
`
`Patent 7,631,191 B2
`
`Before BARBARA A. BENOIT, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`Institution of Covered Business Method Patent Review
`
`DECISION
`
`37 C.F.R. § 42.208
`
`1
`
`USAA 1009
`
`1
`
`USAA 1009
`
`
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`CBM2014-00100
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`Patent 7,631,191 B2
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`1. INTRODUCTION
`
`PNC Bank, National Association (“PNC”), U.S. Bank, National
`
`Association, and U.S. Bancorp (together, “US. Bank; collectively with
`
`PNC, “Petitioner”) filed a Petition (Paper 3, “Pet.”) requesting a review
`
`under the transitional program for covered business method patents of
`
`U.S. Patent No. 7,631,191 B2 (Ex. 1001, “the ’191 patent”). Secure Axcess,
`
`LLC (“Patent Owner”) filed a Preliminary Response (“Prelim. Resp.”).
`
`Paper 7. The Board has jurisdiction under 35 U.S.C. § 324.1
`
`The standard for instituting a covered business method patent review
`
`is set forth in 35 U.S.C. § 324(a), which provides as follows:
`
`THRESHOLD.—The Director may not authorize a post-grant
`review to be instituted unless the Director determines that the
`
`information presented in the petition filed under section 321, if
`such information is not rebutted, would demonstrate that it is
`more likely than not that at least 1 of the claims challenged in
`the petition is unpatentable.
`
`Petitioner challenges the patentability of claims 1-32 of the ’ 191
`
`patent under 35 U.S.C. §§ 101, 103, and 112. Taking into account Patent
`
`Owner’s Preliminary Response, we determine the information presented in
`
`the Petition demonstrates it is more likely than not that the challenged claims
`
`are unpatentable. Accordingly, pursuant to 35 U.S.C. § 324, we authorize a
`
`covered business method patent review to be instituted as to claims 1-32 of
`
`the ’ 191 patent.
`
`1 See Section 18(a) of the Leahy-Smith America Invents Act, Pub. L.
`No. 112-29, 125 Stat. 284, 329 (2011) (“AIA”).
`2
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`CBM2014-00100
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`Patent 7,631,191 B2
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`A. Related Matters
`
`Petitioner represents that the ’ 191 patent has been asserted against
`
`PNC in Secure Axcess, LLC v. PNC Bank, National Ass ’n, Case No. 6:13-
`
`cv-00722-LED (E.D. Tex.) and has been asserted against U.S. Bank in
`
`Secure Axcess, LLC v. U.S. Bank, National Ass ’n, Case No. 6:l3-cv-00717-
`
`LED (E.D. Tex.). Pet. 2, Paper 6. Petitioner also identifies sixteen other
`
`court proceedings in which Patent Owner has asserted the ’ 191 patent.
`
`See Pet. 2-3; see also Paper 6 (Patent Owner’s Related Matters).
`
`Petitioner also identifies a request for an mterpartes review of the
`
`’ 191 patent filed by a different petitioner—EMC Corp. v. Secure Axcess,
`
`LLC, Case IPR2014—00475 (PTAB), Paper 3. Pet. 3.
`
`B. The '19] Patent
`
`The ’ 191 patent relates to authenticating a web page, such as
`
`“www.bigbank.com.” Ex. 1001, Abstract, 1:16-18, 1:28-34. The ’191
`
`patent explains that customers can be deceived by web pages that appear to
`
`be authentic, but are not. See id. at 1:28-34. A web page that has been
`
`authenticated according to the techniques described by the ’ 191 patent
`
`includes “all of the information in the same format as the non-authenticated
`
`page.” Id. at 2:58-60. The authenticated web page, however, also includes
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`an “authenticity stamp.” Id. at 2:60-62.
`
`Figures 1 and 2 are set forth below:
`
`
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`CBM2014-00100
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`Patent 7,631,191 B2
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`54A
`
`545
`
`5-ac
`
`540
`
`HYPER um-:1
`
`HYPER LINK 2
`
`HYPER LINK 3
`
`Hvvtn um 4
`
`IITLI:
`
`1-us=sAs«xM=nr
`or A was P#G(-..
`THE PAGE
`mcwoes ATITLE.
`soul; HYPERLINKS.
`A srw-=HIc.a1
`must mo mus
`text
`
`56
`
`so
`
`54A
`
`548
`
`548
`
`540
`
`HYPER LLNK I
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`
`
`HYPFR l !NK 2
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`HVPER LENK 3
`
`
`
`
`HYPER l INK 4
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`
`
`TITLE
`
`THISI5.I'\SN\¥’lE
`OF A WEB PAGE
`THE PKGE
`INCLUDES ATlTl.E.
`SOME HYFERLINKS
`AGEAPHICAL
`IMAGE AND ‘HIS
`
`56
`
`
`
`
`
`
`
`
`
`@r»@
`
`B
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`61]
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`Figure 2
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`Figures 1 and 2 each show web page 50 having title 52, hyperlinks 54A,
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`54B, 54C, and 54D, textual information 56, and graphical images 58A and
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`58B. Id. at 2:54-57. Figure 1 shows web page 50 has not been
`
`authenticated, whereas Figure 2 shows web page 50 has been authenticated.
`
`Id. at 2:54-61. The authenticated web page shown in Figure 2, unlike the
`
`non-authenticated web page shown in Figure 1, includes authenticity
`
`stamp 60. Id.
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`
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`CBM2014-00100
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`Patent 7,631,191 B2
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`C. Illustrative Claims
`
`Petitioner challenges all thirty-two claims of the ’ 191 patent.
`
`Claims 1, 17, 29, 31, and 32 are independent claims. Claims 1 and 29 are
`
`illustrative of the claims at issue and read as follows:
`
`1. A method comprising:
`
`computer,
`authentication host
`an
`at
`transforming,
`received data by inserting an authenticity key to create
`formatted data; and
`
`the
`returning, from the authentication host computer,
`formatted data to enable the authenticity key to be retrieved
`from the formatted data and to locate a preferences file,
`
`wherein an authenticity stamp is retrieved from the
`
`preferences file.
`
`29. An authentication system comprising:
`
`an authentication processor configured to send formatted
`data having an authenticity key to a client, wherein the
`authenticity key enables location of a preferences file, and
`wherein an authenticity stamp is retrieved from the preferences
`file.
`
`D. Asserted Grounds of Unpatentabilily
`
`Petitioner asserts that the challenged claims are unpatentable based on
`
`the following grounds:
`
`
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`CBM2014-00100
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`Patent 7,631,191 B2
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`W— § 103
`
`SHTTP2 and Arm?
`SHTTP, Arent, and Palage4
`1-16» 29-32 —
`
`§ 103
`W2
`
`II. ANALYSIS
`
`A ground of unpatentability can be instituted only if the petition
`
`supporting the ground demonstrates that it is more likely than not that at
`
`least one challenged claim is unpatentable. 37 C.F.R. § 42.208(c). In the
`
`analysis that follows, we discuss facts as they have been presented thus far
`
`in this proceeding. Any inferences or conclusions drawn from those facts
`
`are neither final nor dispositive of any issue related to any ground on which
`
`we institute review.
`
`A. Claim Construction
`
`We begin our analysis with claim construction. Bancorp Servs.,
`
`L.L. C. v. Sun Life Assurance Co. of Canada, 687 F.3d 1266, 1273-74 (Fed.
`
`Cir. 2012) (“[I]t will ordinarily be desirable—and often necessary—to
`
`resolve claim construction disputes prior to a § 101 analysis, for the
`
`determination of patent eligibility requires a full understanding of the basic
`
`2 E. RESCORLA & A. SCHIFFMAN, The Secure HyperText Transfer Protocol,
`the Internet Engineering Task Force (July 1996) (Ex. 1009) (“SHTTP”).
`3 U.S. Patent 6,018,724, issued Jan. 25, 2000 (Ex. 1010) (“Arent”).
`4 U.S. Patent 6,018,801, issued Jan. 25, 2000 (Ex. 1011) (“Palage”).
`6
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`Patent 7,631,191 B2
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`character of the claimed subject matter”). In a covered business method
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`patent review, a claim in an unexpired patent shall be given its broadest
`
`reasonable construction in light of the specification of the patent in which it
`
`appears. 37 C.F.R. § 42.300(b). Under the broadest reasonable construction
`
`standard, claim terms 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).
`
`The parties submit proposed constructions for several different claim
`
`terms. Pet. 15-19; Prelim. Resp. 9-18. For purposes of this decision, we
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`only construe “insert [or “inserting”] an authenticity key” and “received
`
`data.” We also determine, on this record, whether the recited authenticity
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`key itself is required to locate a preferences file. No other terms in the
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`challenged claims require express construction for this decision.
`
`I. “insert an authenticity key” or
`
`(C (K-
`inserting an authenticity key”
`
`Each of independent claims 1, 31, and 325 recites “inserting an
`
`authenticity key to create formatted data,” and independent claim 17 recites
`
`“an authentication processor configured to insert an authenticity key into
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`formatted data.”
`
`Neither Petitioner nor Patent Owner proposes an express construction
`
`for inserting an authenticity key. As made clear by Patent Owner’s
`
`arguments concerning the asserted prior art, Patent Owner contends the
`
`5 More precisely, claim 32 recites “inserting an authenticity key to create the
`formatted data.”
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`7
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`Patent 7,631,191 B2
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`recited “inserting” does not encompass “attaching” an authentication key to
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`a document. Prelim. Resp. 38. Rather, according to Patent Owner,
`
`“transforming, at an authentication host computer, received data by inserting
`
`an authenticity key to create formatted data,” as recited in claim 1, requires
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`“inserting the [authentication key] into data received by a host computer.”
`
`Id.
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`The ’ 191 patent does not set forth a special definition for “insert” or
`
`“inserting.” Accordingly, we look to the ordinary meaning of the term
`7
`
`“insert’
`
`to put or set into, between, or among.6 The ’191 patent describes
`
`an authenticity key being inserted into a web page, without further
`
`elaboration as: “The logic of FIG. 10 then moves to block 610 where the
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`authenticity key is inserted into the web page.” Ex. 1001, 8: 1-3 (emphasis
`
`added); see also id. at 1:55-57, Fig. 10 (block 610). The ’191 patent’s use of
`
`“insert” is consistent with its ordinary meaning, which encompasses “being
`
`put into.”
`
`On this record, we disagree with Patent Owner that “insert” is limited
`
`to being put into, and does not encompass being attached to, because Patent
`
`Owner has not shown where this term is set forth in the ’191 patent in a
`
`manner sufficient to supersede the ordinary meaning of the term “insert.” If
`
`an inventor acts as his or her own lexicographer, the definition must be set
`
`forth in the specification with reasonable clarity, deliberateness, and
`
`precision. Renishaw PLC v. Marposs Societa ’ per Aziom, 158 F.3d 1243,
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`6 AMERICAN HERITAGE DICTIONARY 933 (3d ed. 1992) (defining “insert” as
`“1. To put or set into, between, or among”).
`8
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`Patent 7,631,191 B2
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`1249 (Fed. Cir. 1998). Patent Owner’s construction of “insert” fails to
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`account sufficiently for its ordinary meaning, which is not limited “to put
`
`into” but encompasses “to put between or among.”
`
`The broadest reasonable construction of “inserting,” including
`
`inserting by putting among something, encompasses attaching an
`
`authentication key to something. Further, the claim language recites
`
`“formatted data” (rather than a web page7), and so is broader than the
`
`embodiment of inserting the authenticity key into the web page. Thus, the
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`claim language is not limited to the embodiment “of inserting into a web
`
`page,” which appears in the written description. See In re Van Geuns, 988
`
`F.2d 1181, 1184 (Fed. Cir. 1993); see also Thorner v. Sony Computer
`
`Entm ’tAm. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (It is not enough that
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`the only embodiment, or all of the embodiments, contain a particular
`
`limitation to limit a claim to that particular limitation.).
`
`Accordingly, on this record and for purposes of institution, the
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`broadest reasonable construction of “inserting an authenticity key” and
`
`“insert an authenticity key” encompasses attaching an authenticity key to the
`
`received data to create formatted data.
`
`2. “received data ”
`
`Independent claim 1 recites “transforming, at an authentication host
`
`computer, received data by inserting an authenticity key to create formatted
`
`data.” Neither Petitioner nor Patent Owner proposes an express construction
`
`7 Claim 2, which depends from claim 1, additionally recites “wherein the
`formatted data is a web page.”
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`9
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`for “received data,” as recited in claim 1. As made clear by Patent Owner’s
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`arguments concerning the asserted prior art, however, Patent Owner
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`contends that “received data,” as recited in claim 1, is limited to data
`
`received by the authentication host computer and “sent from elsewhere”—
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`presumably, a device other than the authentication host computer. Prelim.
`
`Resp. 39.
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`Claim 1 does not recite expressly from where the received data
`
`originates. Moreover, Patent Owner has not provided sufficient evidence at
`
`this juncture to persuade us that “received data” recited in claim 1 is limited
`
`to data sent from a device other than the authentication host computer.
`
`Thus, the broadest reasonable construction of “received data” encompasses
`
`receiving data sent from a component in or associated with the
`
`authentication host computer.
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`3. “authenticity key” “to locate a preferences file ”
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`One issue raised by Petitioner is whether a preferences file is located
`
`by the authenticity key. Petitioner contends that none of the claims require
`
`the authenticity key be used to locate the preference file and that the written
`
`description only discloses that a preference key, which is different than an
`
`authenticity key, is used to locate the preferences file. Pet. 7; see also
`
`Ex. 1001, 4:38-40 (“Thus, the plug-in 114 must get the preferences key to
`
`determine the location of the preferences file”). Petitioner asserts that, if
`
`Patent Owner “argues that the authenticity key itself locates a preference
`
`file,” claims 1-32 would have been obvious over SHTTP, Arent, and Palage.
`
`Pet. 71-72.
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`10
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`Patent 7,631,191 B2
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`Patent Owner does not contend that the authenticity key itself locates
`
`a preferences file. Rather, Patent Owner proposes the construction of the
`
`term “authenticity key” should be “information that (1) indicates that a page
`
`should be authenticated and (2) may be used to support authentication.”
`
`Prelim. Resp. 10; see id. at 45. Patent Owner also contends that each of the
`
`independent claims only requires “the authenticity key to provide the ability
`
`to determine a location of a preference file.” Pet. 15. For support, Patent
`
`Owner relies on a preferred embodiment disclosed in the written description
`
`in which the preferences file is hidden and its location is determined only
`
`after the authenticity key is verified. Pet. 16-17 (citing Ex. 1001, 4:37-38,
`
`4:16-25, 9:53-57). According to Patent Owner, an authenticity key enables
`
`or provides the ability to determine the location of the preferences file, for
`
`example, if determining the location of the preferences file is performed
`
`only if the authentication key is verified. Pet. 17.
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`None of the claims expressly requires that the authenticity key itself
`
`locates a preferences file or is used to locate a preferences file. For example,
`
`claim 1 recites “retuming, from the authentication host computer, the
`
`formatted data to enable the authenticity key to be retrieved from the
`
`formatted data and to locate a preferences file.” As such, claim 1 does not
`
`require expressly that the authenticity key itself locates a preferences file or
`
`is used to locate a preferences file, only that the authenticity key enables
`
`locating a preferences file. Similarly to claim 1, independent claim 29
`
`recites “wherein the authenticity key enables location of a preferences file.”
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`Independent claim 17 recites “to insert an authenticity key into
`
`formatted data to enable authentication of the authenticity key to verify a
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`1 1
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`Patent 7,631,191 B2
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`source of the formatted data and to retrieve an authenticity stamp from a
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`preferences file. Although claim 17 recites “to retrieve an authenticity
`
`stamp from a preferences file,” claim 17 does not recite locating a
`
`preferences file, much less reciting that the preferences file is located by an
`
`authenticity key.
`
`Independent claims 31 recites “wherein the authenticity key is
`
`retrieved fiom the formatted data to locate a preferences file,” and
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`independent clam 32 recites “retrieving, by the client computer, the
`
`authenticity key from the formatted data to locate a preferences file.” Each
`
`of these claims requires retrieving the authenticity key from the formatted
`
`data to locate a preferences file. Patent Owner contends, however, these
`
`claims only require the authenticity key to provide the ability to determine a
`
`location of a preferences file. Pet. 15.
`
`Neither Patent Owner nor Petitioner contends that the authenticity key
`
`itself locates a preferences file or is used to locate a preferences file. On this
`
`record, we are not persuaded that any claim in the ’ 191 patent requires the
`
`authenticity key to locate a preferences file.
`
`B. Standing
`
`Section 18 of the AIA provides for the creation of a transitional
`
`program for reviewing covered business method patents. Section 18 limits
`
`reviews to persons or their privies who have been sued or charged with
`
`infringement of a “covered business method patent.” AIA § 18(a)(1)(B);
`
`see also 37 C.F.R. § 42.302. As discussed above in section I-A, Petitioner
`
`represents it has been sued for infringement of the ’ 191 patent and is not
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`estopped from challenging the claims on the grounds identified in the
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`Petition. Pet. 2, 14; see also Paper 6.
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`The parties dispute whether the ’ 191 patent is a “covered business
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`method patent,” as defined in the AIA and 37 C.F.R. § 42.301. See Pet.
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`18-35; Prelim. Resp. 15-31. “[T]he term ‘covered business method patent’
`
`means a patent that claims a method or corresponding apparatus for
`
`performing data processing or other operations used in the practice,
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`administration, or management of a financial product or service, except that
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`the term does not include patents for technological inventions.”
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`AIA§ 18(d)(l); see 37 C.F.R. § 42.30l(a).
`
`We conclude that the ’ 191 patent meets the definition of a “covered
`
`business method patent” for the reasons set forth below, and Petitioner has
`
`standing to file a petition for a covered business method patent review.
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`I . Financial Product or Service
`
`One requirement of a covered business method patent is for the patent
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`to “claim[] a method or corresponding apparatus for performing data
`
`processing or other operations used in the practice.” AIA § 18(d)(l); see
`
`also 37 C.F.R. § 42.301(a). 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.”’ 77 Fed. Reg.
`
`48,374, 48,735 (Aug. 14, 2012) (quoting 157 Cong. Rec. S5432 (daily ed.
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`Sept. 8, 2011)).
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`13
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`Petitioner contends the ’ 191 patent meets the financial product or
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`service requirement, because the patent specification includes discussions of
`
`financial services using the claimed systems and processes, and because
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`Patent Owner has sued approximately fifty financial institutions, including
`
`banks. Pet. 11-12.
`
`In response, Patent Owner contends that financial products and
`
`services include “only financial products such as credit, loans, real estate
`
`transactions, check cashing and processing, financial services and
`
`instruments, and securities and investment products.” Pet. 20; see
`
`also Pet.18-20. According to Patent Owner, the ’ 191 patent claims an
`
`authentication server that authenticates data (such as a web page) from a
`
`service. Pet. 25, 28. As such, Patent Owner contends the ’ 191 patent is not
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`a covered business method patent, because (1) the claimed method and
`
`apparatus can be used by a business generally, and (2) the claim language is
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`devoid of any financial or monetary terms. Pet. 20, 22-25. Patent Owner
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`further contends that asserting the ’ 191 patent against financial institutions is
`
`not sufficient to demonstrate the ’ 191 patent claims activities that are
`
`financial in nature, incidental to a financial activity, or complementary to a
`
`financial activity. Prelim. Resp. 26-28.
`
`Based on the record before us, we determine that the method and
`
`apparatus claimed by the ’ 191 patent are incidental to a financial activity.
`
`The written description of the ’191 patent discloses a need by financial
`
`institutions to ensure customers are confident that the financial institution’s
`
`web page is authentic (Ex. 1001, 1:28-33); alternative embodiments of the
`
`invention are disclosed as being used by financial institutions (id. at 8:21-23)
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`14
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`and used in commerce, including (i) transacting business over a network,
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`such as the Internet (id. at 10:65-1 1 :3); and (ii) selling of goods, services, or
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`information over a network (id. at 17-21). Although not determinative,
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`Patent Owner’s many suits alleging infringement of claims of the ’ 191
`
`patent by financial institutions is a factor, weighing toward the conclusion
`
`that the ’ 191 patent claims a method or apparatus that at least is incidental to
`
`a financial activity.
`
`Because the method and apparatus claimed by the ’ 191 patent are
`
`incidental to a financial activity, the ’ 191 patent 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. See 37 C.F.R. § 42.301(a).
`
`2. Exclusion for Technological Inventions
`
`The definition of “covered business method patent” in Section 18 of
`
`the AIA expressly excludes patents for “technological inventions.”
`
`AIA § l8(d)(l); see also 37 C.F.R. § 42.30l(a). To determine whether a
`
`patent is for a technological invention, 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). 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,
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`Patent 7,631,191 B2
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`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, 48,764 (Aug. 14,
`
`2012).
`
`Petitioner indicates that the ’ 191 patent is not directed to a
`
`technological invention, because the claims do not solve a technical problem
`
`using a technical solution. Pet. 13-14. More specifically, according to
`
`Petitioner, the ’191 patent is directed to solving a non-technical problem—
`
`ensuring customers are confident that web pages are authentic. Id. at 13. As
`
`noted by Petitioner, the claims recite only known computer components and
`
`do not claim specialized technology, such as encryption algorithms, for
`
`authenticating a web page. Id. at 13-14.
`
`Patent Owner disagrees. Prelim. Resp. 28-35. Patent Owner contends
`
`that every claim of the ’ 191 patent “solves the technical problem of
`
`distinguishing authentic data (e.g., data for web pages) sent by a legitimate
`
`site from fraudulent data sent by a fraudulent site.” Id. at 29. Patent Owner
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`further contends the claimed subject matter, as a whole, recites a
`
`technological solution — a computer system, including an authentication
`
`system, an authentication key, and authentication stamp, that executes a
`
`particular series of steps. Id. at 30, 31.
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`Patent 7,631,191 B2
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`Although the claimed steps of the ’ 191 patent may be an allegedly
`
`novel and nonobvious process, based on the record before us, we find that
`
`the technological features of the claimed steps are directed to using known
`
`technologies. See 77 Fed. Reg. at 48,764 (indicating use of known
`
`technologies does not render a patent a technological invention). The patent
`
`specification indicates that components of the computer system used in the
`
`claimed authentication process are known technologies. For example, the
`
`written description discloses known computer systems and devices running
`
`known operating systems (Ex. 1001, 3:30-34, 10:30-35, 11:7-12), known
`
`user input devices (id. at 11:3-6), and known networks and networking and
`
`communication protocols (id. at 3:38-44, 10:67-1 1 :3, 11:12-17). The patent
`
`specification further discloses that the system is programmed using known
`
`programming and scripting languages, and known data structures (id. at
`
`10:35-40), and discloses that the system uses “conventional techniques for
`
`data transmission, signaling, data processing, network control, and the like”
`
`(id. at 10:41-44).
`
`Furthermore, the patent specification describes using known
`
`cryptography techniques for encrypting and decrypting the authenticity key.
`
`See id. at 6:28-32. Also, the patent specification incorporates by reference a
`
`cryptography text. Id. at 10:44-48. The recited authentication stamp is
`
`described as having a number of variations, including graphics only, text
`
`only, text and graphics, audio, blinking (Ex. 1001, 2:67-4), but does not
`
`describe novel or nonobvious technology used to implement those features.
`
`Patent Owner has not shown persuasively that the claimed subject
`
`matter, as a whole, requires any specific, unconventional software, computer
`
`17
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`Patent 7,631,191 B2
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`equipment, cryptography algorithms, processing capabilities, or other
`
`technological features. Patent Owner’s identification of allegedly novel or
`
`unobvious steps, such as limitations in the independent claim and dependent
`
`claims 2 and 4 (Prelim. Resp. 30), does not persuade us that any of the steps
`
`require the use of specific computer hardware alleged to be novel and
`
`unobvious over the prior art. 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 does not render the claimed subject matter a technological
`
`invention. See 77 Fed. Reg. at 48,764.
`
`We also have considered whether the claimed subject matter solves a
`
`technical problem using a technical solution, as contended by Patent Owner,
`
`(Prelim. Resp. 29, 34-35), but, because we conclude that the claimed subject
`
`matter, as a whole, does not recite a technological feature that is novel and
`
`unobvious over the prior art, the ’ 191 patent is not directed to a
`
`technological invention, which is excluded from a covered business method
`
`patent review.
`
`Accordingly, the ’ 191 patent is eligible for a covered business method
`
`patent review.
`
`C. Asserted Ground that Claims I -32 Are Unpatentable Under § I 0]
`
`Petitioner challenges claims 1-32 of the ’ 191 patent as directed to
`
`patent-ineligible subject matter under 35 U.S.C. § 101. Pet. 72-77. Patent-
`
`eligible subject matter is defined in 35 U.S.C. § 101:
`
`Whoever invents or discovers any new and useful process,
`machine, manufacture, or composition of matter, or any new
`
`18
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`Patent 7,631,191 B2
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`and useful improvement thereof, may obtain a patent therefor,
`subject to the conditions and requirements of this title.
`
`There are, however, three limited, judicially-created exceptions to the
`
`broad categories of patent-eligible subject matter in § 101:
`
`laws of nature;
`
`natural phenomena; and abstract ideas. Mayo Collaborative Servs. v.
`
`Prometheus Labs, Inc., 132 S. Ct. 1289, 1293 (2012). The Supreme Court
`
`has made clear that the test for patent eligibility under § 101 is not amenable
`
`to bright-line categorical rules. See Bilski v. Kappos, 130 S. Ct. 3218, 3222
`
`(2010).
`
`I. Whether the Claims Are Directed to an Abstract Idea
`
`Petitioner challenges each claim of the ’ 191 patent as failing to recite
`
`patentable subject matter under § 101, because the claims fall within the
`
`judicially created exception encompassing abstract ideas. Pet. 73-76. In
`
`Alice Corp. Pty, Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), the
`
`Supreme Court reiterated the framework set forth previously in Mayo, “for
`
`distinguishing patents that claim laws of nature, natural phenomena, and
`
`abstract ideas from those that claim patent-eligible applications of these
`
`concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to
`
`“determine whether the claims at issue are directed to one of those patent-
`
`ineligible concepts.” Id. If they are directed to a patent-ineligible concept,
`
`the second step in the analysis is to consider the elements of the claims
`737
`
`“individually and ‘as an ordered combination
`((4
`
`to determine whether there
`
`are additional elements that
`
`transform the nature of the claim’ into a
`
`patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1291, 1297).
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`19
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`Patent 7,631,191 B2
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`In other words, the second step is to “search for an ‘inventive concept’—i.e.,
`
`an element or combination of elements that is ‘sufficient to ensure that the
`
`patent in practice amounts to significantly more than a patent on the
`
`[ineligible concept] itself’” Id. (alteration in original) (quoting Mayo, 132
`
`S. Ct. at 1294).
`
`Turning to the Petition, Petitioner, relying on the framework set forth
`
`in Mayo and followed in Alice, asserts that claims 1-32 are unpatentable
`
`under § 101, because the claims are drawn to patent-ineligible “abstract
`
`ideas, with only insignificant, well-known subject matter added.” Pet. 73;
`
`see also Pet. 73-76. Patent Owner disagrees. Prelim. Resp. 56-65.
`
`In determining whether a method or process claim recites an abstract
`
`idea, we must examine the claim as a whole. Alice, 134 S. Ct. at 2355 n. 3.
`
`Claim 1, as a whole, relates to a computer-implemented method to transform
`
`data in a particular manner—by inserting an authenticity key to create
`
`formatted data, enabling a particular type of computer file to be located and
`
`from which an authenticity stamp is retrieved. On its face, there is nothing
`
`immediately apparent about these physical steps that would indicate the
`
`claim is directed to an abstract idea.
`
`Moreover, claim 1, as a whole, is distinguishable from the patent-
`
`ineligible abstract concepts found in Alice or Bilski. Alice involved “a
`
`method of exchanging financial obligations between two parties using a
`
`third-party intermediary to mitigate settlement risk.” Alice, 134 S. Ct. at
`
`2356. Bilski involved the concept of hedging risk, which the Court deemed
`
`“a method of organizing human activity.” Bilski, 130 S. Ct. at 3222. Like
`
`the concept of hedging risk in Bilski, Alice ’s “concept of intermediated
`
`20
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`Patent 7,631,191 B2
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`((4
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`settlement” was held to be
`
`a fundamental economic practice long prevalent
`
`in our system of commerce.’” Alice, 134 S. Ct. at 2356. Similarly, the
`
`Court in Alice found that “[t]he use of a third-party intermediary .
`
`.
`
`. is also a
`
`building block of the modern economy.” Id. “Thus,” the Court held,
`
`“intermediated settlement .
`
`.
`
`. is an ‘abstract idea’ beyond the scope of
`
`§ 101
`
`Id.
`
`Petitioner asserts that claim 1 is an abstract idea, because it is nothing
`
`more than computerizing a purported centuries old practice of placing a
`
`trusted stamp or seal on a document to indicate the authenticity of the
`
`document. Pet. 74. Petitioner’s position is unpersuasive, because as
`
`indicated by Patent Owner (Prelim. Resp. 64-65), Petitioner does not tie
`
`adequately the claim language to the purported abstract concept of placing a
`
`trusted stamp or seal on a document. Although the claim recites retrieving
`
`an authenticity stamp, the claim does not recite placing the stamp, much less
`
`doing so on a paper document, presumably as “centuries-old” practices have
`
`done. Similarly, the claim does not recite a paper document. Moreover,
`
`claim 2, which depends from claim 1, additionally recites that the formatted
`
`data is a Web page, not a paper document.
`
`We also find that Petitioner does not provide sufficient persuasive
`
`evidentiary support that the placing of a trusted stamp or seal on a document
`
`is “a fundamental economic practice” or a “building block of the modern
`
`economy.” See Alice, 134 S. Ct. at 2356 (citing various references
`
`concerning the concept of interrnediated settlement, including an 1896
`
`reference).
`
`21
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`Patent 7,631,191 B2
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`Petitioner further asserts claim 1 is patent-ineligible abstract idea,
`
`because it “relates to nothing more than manipulating and collecting data.”
`
`Pet. 73 (citing CyberS0urce Corp. v. Retail Decisions, 1110., 654 F.3d 1366,
`
`1370 (Fed. Cir. 2011); In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989)).
`
`Patent Owner disagrees, indicating that claim 1 recites (1) transforming at an
`
`authentic
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