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 CBM2016-00064
`Patent 8,266,432
`______________________
`
`
`
`PETITIONER’S OPPOSITION TO MOTION FOR AUTHORIZATION TO
`REQUEST A CERTIFICATE OF CORRECTION
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`United Services Automobile Association,
`
`Petitioner,
`
`v.
`
`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,,
`Patent Owner
`______________________
`
`Case CBM2016-00064
`Patent 8,266,432
`______________________
`
`
`
`PETITIONER’S OPPOSITION TO MOTION FOR AUTHORIZATION TO
`REQUEST A CERTIFICATE OF CORRECTION
`
`
`
`CBM2016-00064
`Patent 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”)
`
`
`
`i
`
`
`
`CBM2016-00064
`Patent 8,266,432
`
`USAA-1015
`
`USAA-1016
`
`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
`
`USAA-1028
`
`PCT Application Publication WO2003021837 A1
`
`
`
`ii
`
`
`
`CBM2016-00064
`Patent 8,266,432
`
`USAA-1029
`
`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
`
`USAA-1040
`
`Office Action for U.S. Patent Application Serial No. 11/33,400,
`mailed July 6, 2010
`
`USAA-1041
`
`USAA-1042
`
`
`
`Terminal Disclaimer filed December 12, 2011, in U.S. Patent
`Application Serial No. 11/333,400 to Obviate a Provisional
`Double Patenting Rejection over U.S. Patent Application Serial
`No. 12/210,926
`
`Response to Office Action filed in U.S. Patent Application
`Serial No. 11/333,400 on November 17, 2011
`iii
`
`
`
`CBM2016-00064
`Patent 8,266,432
`
`USAA-1043
`
`Response to Office Action filed in U.S. Patent Application
`Serial No. 11/333,400 on March 5, 2012
`
`USAA-1044
`
`Response to Office Action filed in U.S. Patent Application
`Serial No. 12/210,926 on November 17, 2011
`
`USAA-1045
`
`Response to Office Action filed in U.S. Patent Application
`Serial No. 12/210,926 on March 1, 2012
`
`USAA-1046
`
`February 8, 2016, letter from Michael T. Zoppo, Fish &
`Richardson, to Lei Mei and Reece Nienstadt, Mei & Mark LLP,
`re Continuity Priority Problems
`
`USAA-1047
`
`Non-Publication Request filed by Patent Owner for U.S. Patent
`Application Serial No. 11/33,400 on January 18, 2006
`
`USAA-1048
`
`Declaration of Jeffrey K. Hollingsworth in Support of
`Plaintiff’s Rebuttal Brief on Claim Construction in Asghari-
`Kamrani et al. v. USAA, Civ. Action No. 2:15-cv-00478-RGD-
`LRL
`
`USAA-1049
`
`Plaintiff’s Rebuttal Brief on Claim Construction in Asghari-
`Kamrani et al. v. USAA in Asghari-Kamrani et al. v. USAA,
`Civ. Action No. 2:15-cv-00478-RGD-LRL
`
`
`
`
`
`iv
`
`
`
`CBM2016-00064
`Patent 8,266,432
`
`
`The Patent Owner’s Motion contradicts positions it has already taken before
`
`the Office and unduly prejudices Petitioner. It should be denied.
`
`I. PO’s Motion Fails To Meet The Statutory And Regulatory Burden of Proof
`
`35 U.S.C. §255 governs an applicant’s “mistake of clerical or typographic
`
`nature, or of minor character.” To be eligible for redress under §255, “a typograph-
`
`ical error should be manifest from the contents of the file of the patent sought to be
`
`corrected.” In re Arnott, 19 U.S.P.Q.2d 1049, 1053 (Comm’r Pat. 1991). A missing
`
`priority claim cannot be manifest or “clearly evident from the specification, draw-
`
`ings, and prosecution history.” Superior Fireplace v. Majestic Prods. Co., 270 F.3d
`
`1358, 1373 (Fed. Cir 2001). In PO’s own words, “neither the application nor the
`
`patent contained a specific reference to the earlier filed applications.” PO Mot. at 2.
`
`Moreover, the governing regulations state that “[t]he party filing the motion
`
`has the burden of proof to establish that it is entitled to the requested relief.” 37 CFR
`
`41.121(b); see also 37 CFR 41.121(c)-(f), 42.20.
`
`Here, PO attempts to invoke only 37 CFR 41.121(a)(1)(ii) while ignoring
`
`other provisions. The purported mistake is failure to claim priority as a continuation
`
`in part (“CIP”) to a “newly discovered” application that, in turn, claims CIP benefit
`
`to the ’432 patent’s existing grandparent. PO fails to account for the controlling au-
`
`thority that “[a] mistake is not considered to be of the ‘minor’ character required for
`
`the issuance of a Certificate of Correction if the requested change would materially
`
`
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`1
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`
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`CBM2016-00064
`Patent 8,266,432
`
`affect the scope or meaning of the patent.” MPEP 1481. In the present case, the PO
`
`seeks to add a new priority document in the ’400 App. that defines claim terms in
`
`express contradiction of the meaning of those same terms advanced in court with
`
`respect to the ’432 patent. For example, the ’400 App. defines the analog of “dy-
`
`namic code” to be both alphanumeric and non-repeating. ’400 App. (8:15-22, “The
`
`dynamic key is an alphanumeric code and will have a different value each time the
`
`individual 10 receives it from his/her trusted-authenticator 30 for authentication pur-
`
`poses.”). However, the Patent Owner argued in court that the “Dynamic Code” de-
`
`fined in the ’432 patent was neither. 1048 and 1049 (Dkt. 127 pp. 2-6; Dkt. 127-1
`
`pp. 3-4). Adding the ’400 App. as a priority document changes the meaning and
`
`scope of the claims. Furthermore, PO has not demonstrated (or even alleged) the
`
`written support for claims. A claim in a CIP application only receives the benefit of
`
`its parent’s priority date if it finds written description support in the parent applica-
`
`tion. See Studiengesellschaft Kohle, M.B.H. v. Shell Oil Co., 112 F.3d 1561, 1564
`
`(Fed. Cir. 1997). Here, PO proffers no showing under 41.121 on continuity in the
`
`specifications and support for any claim of ’432 Patent.
`
`PO has not established the “discovery” of a new priority chain as either “un-
`
`intentionally delayed” pursuant to MPEP 1481.03 or in “good faith” as required by
`
`35 USC §255. Instead, the record indicates that, during prosecution on 12/12/2011,
`
`PO terminally disclaimed the ’400 App. to the appl. for the ’432 Patent. 1041. Even
`
`
`
`2
`
`
`
`CBM2016-00064
`Patent 8,266,432
`
`if PO had no knowledge of its own ’400 App. while filing for the ’432 Patent, which
`
`is difficult to conceive given overlapping inventorship and purported overlapping
`
`subject matter, the double-patenting rejection necessarily put the PO on notice in
`
`acknowledging both the existence of the ’400 App. and the potential relationship to
`
`the application being examined. PO was required to examine the ’400 App. on the
`
`merits in order to support the terminal disclaimer that it filed in that case. 1041. PO’s
`
`failure to contemporaneously declare priority by amending its priority claim repre-
`
`sents a tacit admission of lacking priority, and waiver of such a priority claim. See
`
`U.S.C. § 120 (“The Director may consider the failure to submit such an amendment
`
`within that time period as a waiver of any benefit under this section.”).
`
`It difficult to understand how the “discovery” of the ’400 App. is “uninten-
`
`tionally delayed” or in “good faith” in view of this prosecution before the Office,
`
`much less PO’s more recent activity before the Office. For example, PO earlier filed
`
`a request for CoC on 2/22/2016 to amend priority. PO Mot. at 4. This previously-
`
`filed request, in response to Petitioner’s identification of the priority fault, addresses
`
`a different “unintentionally delayed” priority and no explanation is provided as to
`
`why the instant priority claim was not addressed in that previous request or earlier.1
`
`
`1 Of note, PO has not amended any pending applications related to the ’432 Patent
`
`to claim priority to the ’400 App.
`
`
`
`3
`
`
`
`CBM2016-00064
`Patent 8,266,432
`
`
`Finally, tacit admission, omission and waivers aside, PO has affirmatively dis-
`
`claimed this priority claim in the ’400 App. by virtue of a non-publication request
`
`that establishes that the ’400 App discloses a different invention than the grandparent
`
`application and the ’432 Patent. 1047. The PO thus expressly disclaimed this now
`
`sought course of action. Nowhere does the PO provide an explanation for “good
`
`faith” or “unintentional delay” in light of these facts.
`
`Its cited cases do not help PO as Broadcast dealt with a conflated national
`
`stage filing date with the earliest effective US filing date and DuPont dealt with
`
`correction of PTO error. Broadcast Innovation, L.L.C. v. Charter Commc’n, Inc.,
`
`420 F.3d 1364, 1366-1368 (Fed. Cir. 2005); Du Pont De Nemours and Co. v. Mac-
`
`dermid Printing, 525 F.3d 1353, 1355 (Fed. Cir. 2008).
`
`II. PO’s Motion Complicates The Current Proceeding.
`
`If the Board grants PO’s motion, it will be compelled to investigate a new
`
`priority claim in addition to the present ones. Aside from the support and continuity
`
`issues involving the ’400 App., additional scrutiny is expected as the published
`
`grandparent must support but not render obvious each claim of the ’432 Patent. As
`
`a matter of fairness, if the motion is granted, Petitioner should be allowed to develop
`
`and file a sur-reply revealing the improper basis and the Board should be not be
`
`denied time to thereafter evaluate the basis for this late-claimed priority. Such addi-
`
`tion can only complicate and potentially delay the instant proceeding.
`
`
`
`4
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`
`
`CBM2016-00064
`Patent 8,266,432
`
`III. PO’s Proposed Motion is Highly Prejudicial to the Petitioner.
`
`Petitioner has incurred great expense in evaluating whether and how to pro-
`
`ceed in challenging the ’432 patent, accounting for and preparing the instant Petition
`
`based on the priority chain established by PO and reflected on the face of the ’432
`
`patent. Potential changes or additions yield a moving target that unfairly prejudices
`
`Petitioner. See IPR2015-0559, 44 at 3. PO, on the other hand, had ample notice of
`
`the ’400 App., if only when it was raised in the aforementioned double patenting
`
`rejections, yet PO forewent pursuit of a new priority claim during the pendency of
`
`the ’432 Patent. Further, Petitioner alerted PO of the priority defect on 2/8/2016,
`
`long before the instant CBM Petition was filed, and specifically advised PO that it
`
`intended to file a petition relying on the present priority chain, yet PO again failed
`
`to act. 1046 (letter from Petitioner puts PO on notice). If PO is allowed to cure a
`
`known defect ex post, Petitioner would suffer great prejudice by relying on infor-
`
`mation from the ‘432 Patent when filing the Petition. “[I]t is the job of the patentee…
`
`to write patents carefully and consistently.” Chef Am. Inc. v. Lab-Weston Inc., 358
`
`F.3d 1371, 1371 (Fed. Cir. 2004).
`
`For the reasons above, the Board should exercise discretion under 35 U.S.C
`
`325(d) to deny PO’s motion for authorization to file a CoC.
`
`
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`5
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`CBM2016-00064
`Patent 8,266,432
`
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`Dated: August 3, 2016
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`Respectfully submitted,
`
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`
`
`/W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Attorney for Petitioner
`
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`(Control No. CBM2016-00063)
`
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`6
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on August 3,
`
`2016, a complete and entire copy of this Petitioner’s Opposition to Motion for Au-
`
`thorization to Request a Certificate of Correction, and its exhibits, were provided
`
`via email to the Patent Owner by serving the correspondence email addresses of
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`record as follows:
`
`Jae Youn Kim
`Harold L. Novick
`Sang Ho Lee
`Novick, Kim & Lee, PLLC
`1604 Spring Hill Rd. Suite 320
`Vienna, VA 22182
`
`Email: skim@nkllaw.com
`Email: hnovick@nkllaw.com
`Email: slee@nkllaw.com
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`/Edward G. Faeth/
`
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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