CBM2016-00064
`U.S. Patent No. 8,266,432
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNITED SERVICES AUTOMOBILE ASSOCIATION,
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`Petitioner
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`v.
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`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
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`Patent Owners
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`U.S. PATENT NO. 8,266,432
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`Case CBM2016-00064
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`PATENT OWNER PRELIMINARY RESPONSE
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`Mail Stop: PATENT BOARD
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`Patent Trial and Appeal Board
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`United States Patent and Trademark Office
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`P.O. Box 1450
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`Alexandria, VA 22313-1450
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`Table of Contents
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`CBM2016-00064
`U.S. Patent No. 8,266,432
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`INTRODUCTION ......................................................................................... 1
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`SUMMARY OF THE ‘432 PATENT ........................................................... 3
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`I.
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`II.
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`III. THE BOARD DENIED PETITIONER’S PREVIOUS PETITION FOR IPR
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`OF THE ‘432 PATENT ................................................................................... 6
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`IV. THE ‘432 PATENT IS NOT ELIGIBLE FOR REVIEW UNDER § 18 OF
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`THE AIA.......................................................................................................... 8
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`A. The ‘432 Patent Is Not A Covered Business Method Patent ......................... 9
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`1. The Claims of the ‘432 Patent Are Not Directed to a “Financial Product
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`or Service” ...................................................................................................... 9
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`2. The ‘432 Patent Is Not Directed to a “Financial Product or Service”
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`Merely Because Its Specification Indicates That “to increase security in e-
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`commerce” and/or Merely Because The Specification Includes a Few
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`Finance-Related Terms .................................................................................14
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`B. The ‘432 Patent Is Directed to a “Technological Invention” .......................21
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`1. Considered as a Whole, the ‘432 Patent Claims Recite Novel and Non-
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`Obvious Technological Features ..................................................................21
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`2. Considered as a Whole, the ’432 Patent Claims Provide a Technical
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`Solution To a Technical Problem .................................................................23
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`3. Considered as a Whole, the Claims of the ‘432 Patent Meet the High
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`Standard of Novelty ......................................................................................31
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`V.
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`CLAIM CONSTRUCTION .........................................................................36
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`VI.
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`PRIORITY ...................................................................................................37
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`U.S. Patent No. 8,266,432
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`A. The Effective Priority Date For the ‘432 Patent is Aug. 29, 2001 and The
`‘676 Patent Provides Sufficient Written Description Support for the Claims of
`The ‘432 Patent ..................................................................................................38
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`1. The OPFI and the RPFI of the ‘676 Patent can jointly form the claimed
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`external entity. ..............................................................................................39
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`2. “digital identity” .......................................................................................44
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`3. Claims of the ‘432 Patent are supported by the ‘676 Patent ....................45
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`B. Additional Chain of Basis Claim Via U.S. Patent No. 8,281,129 ...............56
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`1. Central entity and Trusted-Authenticator ................................................57
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`2. External-Entity and Business ...................................................................58
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`3. User and Individual ..................................................................................60
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`4. Dynamic Code and Dynamic Key ............................................................60
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`5. Authentication of Online Users ................................................................61
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`C. Patent Owners Do Not Admit that the ‘676 Patent Discloses A Different
`Invention than the ‘432 Patent. .........................................................................74
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`VII. REASONS WHY COVERED BUSINESS METHOD PATENT REVIEW
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`SHOULD NOT BE INSTITUTED ...............................................................76
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`VIII. CONCLUSION ............................................................................................78
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`CBM2016-00064
`U.S. Patent No. 8,266,432
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`LIST OF EXHIBITS
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`Exhibit 2001
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`Statutory Disclaimer
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`Exhibit 2002
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`AOL Time Warner, et al.
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`Exhibit 2003
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`Renewed Request for Certificate of Correction, and
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`Renewed Petition Under pre-AIA 1.78(a)(3)
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`Exhibit 2004
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`U.S. 8,281,129 to Asghari-Kamrani et al.
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`I.
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`INTRODUCTION
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`CBM2016-00064
`U.S. Patent No. 8,266,432
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`Pursuant to 35 U.S.C. § 323, Patent Owners Nader Asghari-Kamrani and
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`Kamran Asghari-Kamrani (“Patent Owner”), who are also the sole Inventors,
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`respectfully submit this Preliminary Response responding to the Petition for
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`Covered Business Method Review (“Petition”) of U.S. Patent No. 8,266,432 (“the
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`‘432 Patent”).1
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`This is not the first time Petitioner has challenged the ‘432 Patent before the
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`Board. On September 1, 2015, Petitioner filed a Petition for Inter Partes Review of
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`the ‘432 Patent under IPR2015-01842 (“Petition for IPR”) based on alleged prior art.
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`On February 26, 2016, subsequent to Patent Owner’s December 10, 2015
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`Preliminary Response, the Board denied institution of the IPR. Now, Petitioner has
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`subsequently filed two Covered Business Method challenges to the same patent.
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`Delayed, serial challenges to the same patent should be viewed unfavorably
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`because they were not contemplated by the AIA. It places a huge burden on patent
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`owners, and permits big companies, such as petitioner, to use its economic power,
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`not its legal positons, to defeat the patent owner. Further, such repetitive activity
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`1 This filing is within three months of the Notice of Filing Date Accorded to Petition
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`(Paper No. 3) and is timely under 35 U.S.C. § 323 and 37 C.F.R. § 42.107(b).
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`U.S. Patent No. 8,266,432
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`unnecessarily tax the resources of the Board, and prejudices patent owners such as
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`the Patent Owner here who are the inventors themselves.
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`The claims of the ‘432 Patent are not eligible for a Covered Business Method
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`Review (“CBMR”). The ‘432 Patent claims do not contain a single element that can
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`be characterized as being related to the “practice, administration, or management of
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`a financial product or service.” AIA §18(d)(1); see also 37 C.F.R. §42.301(a). Rather,
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`the claims are of “general utility” with no tie to any specific financial product or
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`service. The Petition should be denied on this basis alone.
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`Moreover, the ‘432 Patent is directed to a specific technology solution (a new
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`centralized authentication topology) to an authentication and network security
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`problem created by the Internet. This is needed because on the Internet nobody
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`knows if users are who they say they are. Therefore the online environment
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`introduces new security risks and creates the need for a low cost and easy to use
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`authentication system and method. That is what the presently claimed invention is
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`directed to, authenticating a plurality of online users on instantaneous real time basis
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`that does not have any pre-Internet “real-world” analogue. The Federal Circuit has
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`confirmed that such inventions are patent-eligible. DDR Holdings, LLC v. Hotels.
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`Com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).
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` Further, the purported basis for Petitioner’s challenge--that the effective
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`priority date for the ‘432 Patent claims is Sept. 15, 2008-- is wholly unsupported and
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`the priority date for the involved ‘432 Patent is Aug. 29, 2001. This is important
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`because the Petitioner’s proposed ground of rejection rely upon the Nicholson
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`patent, which has a date as a reference that is after the priority date of the ‘432 Patent.
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`Thus, Nicholson is NOT prior art relative to any of the claims of the ‘432 Patent.
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`II.
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`SUMMARY OF THE ‘432 PATENT
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`The ‘432 Patent relates to a technical cyber security system. More particularly,
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`it relates to “a centralized identification and authentication system and method for
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`identifying an individual over a communication network such as Internet, to increase
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`security” (Ex. 1001 at 1:22-25.), and relates to a computerized “method and system
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`for generation of a dynamic, non-predictable and time dependent SecureCode for the
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`purpose of positively identifying an individual.” (Id. at 1:25-28.)
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`The ‘432 Patent issued on September 11, 2012 and is a continuation-in-part
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`of U.S. patent application No. 11/239,046, filed on September 30, 2005, now Patent
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`No. 7,444,676 (the ‘676 Patent), which is a continuation-in-part of U.S. patent
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`application No. 09/940,635, filed on August 29, 2001, now patent No. 7,356,837
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`(the ‘837 Patent).
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`Referring to FIGURE 2, the Specification of the ‘432 Patent describes the
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`claimed method of claim 1 as shown in Table 1 below.
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`U.S. Patent No. 8,266,432
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`The ‘432 Patent, FIG. 2
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`Table 1
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`Arrows
`(FIG. 2)
`F
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`Corresponding Claim Features of Claim 1 of the ‘432 Patent
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`"receiving electronically a request for a dynamic code for the user
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`by a computer associated with a central-entity during the
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`transaction between the user and the external-entity”
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`4
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`G
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`“generating by the central-entity during the transaction a dynamic
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`code for the user in response to the request, wherein the dynamic
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`code is valid for a predefined time and becomes invalid after being
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`used”
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`H
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`“providing by the computer associated with the central-entity said
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`generated dynamic code to the user during the transaction”
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`I and J
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`“receiving electronically by the central-entity a request for
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`authenticating the user from a computer associated with the
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`external-entity based on a user-specific information and the
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`dynamic code as a digital identity included in the request which
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`said dynamic code was received by the user during the transaction
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`and was provided to the external-entity by the user during the
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`transaction”
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`K and L
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`“authenticating by the central-entity the user and providing a result
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`of the authenticating to the external-entity during the transaction if
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`the digital identity is valid”
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`One of advantages of the ‘432 Patent is that the centralized identification and
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`authentication system can be relatively easily established with overall reduced
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`system cost. Thus, the ‘432 Patent solves a problem of computer network security
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`5
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`U.S. Patent No. 8,266,432
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`in an online environment for authenticating a user with an easy and economical
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`authentication system by providing a technical solution. This technical invention is
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`certainly not a method for performing data processing or other operations used in
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`the practice of a financial service.
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`III. THE BOARD DENIED PETITIONER’S PREVIOUS PETITION FOR
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`IPR OF THE ‘432 PATENT
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` On September 1, 2015, Petitioner, United Services Automobile Association,
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`filed a Petition for IPR requesting an inter partes review of claims 1–55 of the ‘432
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`Patent (Ex. 1001).
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`Petitioner relied upon the following prior art references: Brown, U.S. Patent
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`No. 5,740,361, issued April 14, 1998 (“Brown,” IPR2015-01842, Ex. 1010); Myers,
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`et. al., X.509 Internet Public Key Infrastructure Online Certificate Status Protocol
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`– OCSP, RFC 2560, Network Working Group (June 1999) (“Myers,” IPR2015-
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`01842, Ex. 1011); and Neuman, B.C. and Ts’o, T., Kerberos: An Authentication
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`Service for Computer Networks, ISI Research Report, ISI/RS- 94-399, IEEE
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`Communications Magazine (September 1994) (“Neuman,” IPR2015-01842, Ex.
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`1012).
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`Petitioner argued the challenged claims are unpatentable based upon the
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`following grounds: (1) obviousness in view of Brown and Myers (claims 1-55); (2)
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`anticipation in view of Neuman (claims 1-3, 6-28, and 31-55); and (3) obviousness
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`in view of Neuman (claims 4, 5, 29, and 30).
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` On February 26, 2016, the Board denied institution of the IPR (IPR2015-
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`01842, Paper 13) finding that “[p]etitioner’s argument does not explain how the
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`combination of Myers and Brown teaches ‘providing a result of the authenticating
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`to the external entity’ as required by claim 1” (IPR2015-01842, Paper 13 at 9); “we
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`[(the Board)] are not persuaded that Petitioner has presented sufficient evidence or
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`argument to establish a reasonable likelihood that either Brown or the combination
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`of Brown and Myers teaches ‘authenticating by the central-entity the user and
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`providing a result of the authenticating to the external-entity during the transaction
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`if the digital identity is valid’ as recited in independent claim 1” (Id. at 11); and
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`“[h]ere, an allegation that the verifier and authentication server may be the same
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`entity because such a configuration would not be ‘technically infeasible’ or
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`‘frustrate the purpose’ of the reference is not sufficient to establish Neuman teaches
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`that the authentication server and verifier are in fact the same entity” (Id. at 15).
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`Accordingly, the Board has already found that the technical features recited
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`in the ‘432 Patent claims are novel and unobvious over what Petitioner must
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`presumably have considered to be the most relevant prior art.
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`IV. THE ‘432 PATENT IS NOT ELIGIBLE FOR REVIEW UNDER § 18
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`OF THE AIA
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` To be eligible for a Covered Business Method Review (CBMR) under § 18 of
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`the AIA, a patent must be: (i) a “covered business method patent;” and (ii) not
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`directed to a “technological invention.” Sony Corp. of Am. v. Network-1 Tech., Inc.,
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`CBM2015-00078, Paper No. 7 at 7-8 (PTAB July 1, 2015) (hereinafter “Sony”). It
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`is Petitioner’s burden to prove that both elements are established. See 37 C.F.R. §
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`42.301(a); see also Bloomberg LP v. Quest Licensing Corp., CBM2014-00205,
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`Paper No. 16 at 7-11 (PTAB Apr. 7, 2015).
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` Regarding the first element, a patent can only be a “covered business method
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`patent” if it “claims a method or corresponding apparatus for performing data
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`processing or other operations used in the practice, administration, or management
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`of a financial product or service . . . .” AIA § 18(d)(1) (emphasis added); see also 37
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`C.F.R. § 42.301(a).
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` Regarding the second element, a patent claim is a “technological invention”
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`if “the claimed subject matter as a whole recites a technological feature that is novel
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`and unobvious over the prior art; and solves a technical problem using a technical
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`solution.” 37 C.F.R. § 42.301(b). Here, Petitioner fails to analyze the claims as a
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`whole as required by 37 C.F.R. § 42.301(b). Petitioner instead generalizes the
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`challenged claims as a collection of some of their elements (e.g., dynamic code) and
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`alleges that such elements are generic and well-known. Petition at 14-15. Such an
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`approach is improper. Moreover, the Board has already denied institution of
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`Petitioner’s Petition for IPR which alleged that the challenged claims to be
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`anticipated and obvious. Petitioner’s position that the technical features of those
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`claims are not novel and unobvious is thus wholly unsupported and contradicts the
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`Board’s prior decision on that very issue.
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`It is Petitioner’s burden to prove that the ’432 Patent is a “covered business
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`method patent” and that it is not directed to a “technological invention.” While
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`Petitioner’s failure to meet its burden as to either requirement is sufficient to deny
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`institution, here, Petitioner fails to meet its burden as to both requirements for a
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`CBMR under § 18 of the AIA. The Board should therefore deny institution of a
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`CBMR.
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` A. The ‘432 Patent Is Not A Covered Business Method Patent
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`1. The Claims of the ‘432 Patent Are Not Directed to a “Financial
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`Product or Service”
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` The ’432 Patent is not a CBM Patent because it does not “claim[] a method
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`or corresponding apparatus for performing data processing or other operations used
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`in the practice, administration, or management of a financial product or service . . . .”
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`AIA § 18(d)(1) (emphasis added).
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` As Board precedent demonstrates, the proper focus of the CBM Patent inquiry
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`should be on the patent claims. See, e.g., Roxane Labs. Inc. v. Jazz Pharm., Inc.,
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`CBM2014-00161, Paper No. 16 at 10 (PTAB Feb. 9, 2015) (hereinafter “Roxane”)
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`(“In making [the] determination [of whether a patent is a CBM Patent], our focus is
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`firmly on the claims.”); and see also Sony, Paper No. 7 at 11. Here, the challenged
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`claims do not contain a single element related to a “financial product or service.”
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` Claim 1 of the ’432 Patent reads:
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`“A method for authenticating a user during an electronic transaction between
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`the user and an external-entity, the method comprising:
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`receiving electronically a request for a dynamic code for the user by a
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`computer associated with a central-entity during the transaction between the user
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`and the external-entity;
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`generating by the central-entity during the transaction a dynamic code for the
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`user in response to the request, wherein the dynamic code is valid for a predefined
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`time and becomes invalid after being used;
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`providing by the computer associated with the central-entity said generated
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`dynamic code to the user during the transaction;
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`receiving electronically by the central-entity a request for authenticating the
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`user from a computer associated with the external-entity based on a user-specific
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`information and the dynamic code as a digital identity included in the request which
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`said dynamic code was received by the user during the transaction and was provided
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`to the external-entity by the user during the transaction; and
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`authenticating by the central-entity the user and providing a result of the
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`authenticating to the external-entity during the transaction if the digital identity is
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`valid.”
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` There is no term in Claim 1 (or the other challenged claims, which contain
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`similar elements) that expressly recites a financial product or service, or that
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`provides any particular relationship to such a product or service. Nor is there any
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`reasonable claim construction under which these claims could somehow be
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`interpreted to have such a relationship.
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` Petition fails to show that any term in Claim 1 expressly recites a financial
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`product or service, and merely states that “[c]laim 1, for example, recites ‘a method
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`for authenticating a user during an electronic transaction’ that includes ‘receiving
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`electronically…a request for authenticating the user…based on a user-specific
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`information and a dynamic code as a digital identity.’” (Petition at 11). Petitioner,
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`without any ground, support or basis, boldly concludes that “[t]he method for
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`authenticating a user of claim 1 is used for data processing in the practice,
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`administration, and management of financial products and services.” This lack of
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`any nexus between the claims and a “financial product or service” is fatal to
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`Petitioner’s attempt to institute a CBMR. See, e.g., ServiceNow, Inc. v. Hewlett-
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`Packard, Co., CBM2015-00108, Paper No. 10 at 15-16 (PTAB October 7, 2015)
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`(hereinafter “Hewlett-Packard”); J.P. Morgan Chase & Co. v. Intellectual Ventures
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`II LLC, CBM2014-00160, Paper No. 11 at 11-12 (PTAB Jan. 29, 2015) (hereinafter
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`“J.P. Morgan Chase”); Sega of Am., Inc. v. Uniloc USA, Inc., CBM2014-00183,
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`Paper No. 11 at 11 (PTAB Mar. 10, 2015) (hereinafter “Sega”).
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` Rather than being directed to a financial product or service, the claims of the
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`‘432 Patent are of “general utility,” i.e., they recite a particular novel technique for
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`authenticating a user during an electronic transaction between the user and an
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`external-entity without restricting the field of use of the claimed invention to the
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`financial sector or financial activity. When claims are of a “general utility” with no
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`tie to a specific financial product or service, the Board has routinely denied
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`institution of a CBMR. See, e.g., Hewlett-Packard, Paper No. 10 at 15-16 (patent
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`claiming a “system for managing a conversation in a web service” is not a CBM
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`Patent because the “claims are of general utility” with no recitation of “finance-
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`related” terminology or limitations); J.P. Morgan Chase, at 11-12 (denying
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`institution for patent claiming techniques for secure electronic communications
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`that had “general utility not limited or specific to any application”)(emphasis added);
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`Sega, Paper No. 11 at 11 (denying institution for patent whose “claims on their face
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`are directed to technology that restricts the use of software” having “no particular
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`relationship to a financial product or service”).
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` There is no term in any of the challenged claims of the ‘432 Patent that has
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`any arguable, particular relationship to financial products or services. There is no
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`reasonable claim construction under which these claims could be interpreted as
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`financial in nature – indeed, not even Petitioner proposes any claim construction that
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`is financial in nature. See, e.g., Hewlett-Packard, Paper No. 10 at 12. Petitioner
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`ignores the general nature of the claims, instead improperly focusing on illustrative
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`embodiments set forth in the Specification, whose financial aspects are not recited
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`expressly in the claims. Id.
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` Here, Petitioner has failed to point to any language in the claims relating to a
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`financial product or service. This is because there is no such language—the
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`challenged claims of the ’432 Patent are of “general utility” and have no particular
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`relationship to any financial product or service.
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` Petitioner states that “Claim 4, which depends from claim 1, adds that ‘the
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`transaction corresponds to a financial transaction.’” (Petition at 11). However, claim
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`5, which also depends from claim 1, adds that “the transaction corresponds to a non-
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`financial transaction. Thus, claims 4 and 5 as a whole reemphasize that claims of
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`the ‘432 Patent are of “general utility.”
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` Although Patent Owner does not concede that any of Petitioner’s argument
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`related to AIA §18(d)(1) are correct, to expedite and to simplify the process of the
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`CMBR , Patent Owner filed a disclaimer of claims 4 and 29 under 37 C.F.R. 1.321
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`on August 3, 2016. See Exhibit 2001.
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` Under 35 U.S.C. 253, “Such disclaimer shall be in writing and recorded in the
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`Patent and Trademark Office, and it shall thereafter be considered as part of the
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`original patent to the extent of the interest possessed by the disclaimant and by
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`those claiming under him.” (emphasis added). Accordingly, the disclaimer of claims
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`4 and 29 must be treated as if the ‘432 Patent never had them. Without claims 4 and
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`29, it is further ensured that Petitioner has failed to point to any language in the
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`claims relating to a financial product or service. The Board should not institute a
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`CBMR proceeding based on disclaimed claims 4 and 29. See for example,
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`CBM2014-00162, Paper No. 11 at 2.
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` Thus, for at least the reasons described above, the ‘432 Patent is NOT a CBM
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`patent eligible for the review requested by Petitioner.
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`2. The ‘432 Patent Is Not Directed to a “Financial Product or
`Service” Merely Because Its Specification Indicates That “to
`increase security in e-commerce” and/or Merely Because The
`Specification Includes a Few Finance-Related Terms
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`CBM2016-00064
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` Apparently recognizing the lack of nexus between the challenged claims and
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`a “financial product or service,” Petitioner turns to citing a portion of the ’432
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`Patent’s specification in an attempt to show that the ‘432 Patent contemplates some
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`relationship to a financial activity.
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` Petitioner does not, however, assert that the specification in any way limits or
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`guides the scope of the challenged claims. Therefore, as a threshold matter, its
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`approach is irrelevant. As the Board explained in denying institution in J.P. Morgan
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`Chase, if the claims “have general utility not limited or specific to any application”
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`and the specification does not limit “the invention to the financial services sector,”
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`the patent is not a CBM Patent. J. P. Morgan Chase, at 11-12.
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` The claims are applicable generally to electronic transactions of all types
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`which are secure, and are not particularly limited to financial services. See id. at 11,
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`where the Board decided: “The claims of the ʼ574 patent describe methods for
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`implementing portions of the entire process of using public key encryption to
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`certify secure electronic communications. The claims, therefore, have general
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`utility not limited or specific to any application.” (emphasis added). Further, the
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`Board confirmed that “[w]e agree with Patent Owner’s explanation that electronic
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`transactions… are not specific to financial transactions and cover various types
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`of transactions separate from financial transactions.” (emphasis added). Id.
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` The Board determined that an authentication over the online network is not
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`a CBM patent. See id. at 3, 12 (“The ’574 patent relates to public key encryption
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`(PKE), which is used for securing and authenticating transmissions over
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`unsecure networks.”… “We are not persuaded by Petitioner’s arguments that
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`the ’574 patent is a CBM patent, as defined by the AIA and, thus, we do not institute
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`a CBM patent review of the challenged claims.”) (emphasis added).
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` Turning to Petitioner’s specific argument, it contends that “[t]he ’432 Patent’s
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`specification …[has] examples of the invention being used in the context of financial
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`services, stating e.g., that ‘[e]xamples of Central-Entity are banks, credit card issuing
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`companies or intermediary service companies” (emphasis added). (Petition at 11).
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` However, the Board determined, for example, clearing houses (i.e.,
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`intermediary service companies) are not necessarily related to financial services. See
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`J.P. Morgan Chase, at 8.
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` The widespread use of authenticating a user in electronic financial
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`transactions is immaterial and comparable to asserting that a patent on a stapler
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`would qualify as a CBM patent because most financial service firms use staplers to
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`collate financial documents. The claimed method can generally be used to secure or
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`authenticate an online user by any website related to any industry. For example, the
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`claims of ‘432 Patent could read on the situation to authenticate voters in an online
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`election or authenticate students submitting term papers in online academic settings.
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`U.S. Patent No. 8,266,432
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` The authentication system and method of the ‘432 Patent is applicable to any
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`online business for authentication of users as any other authentication systems and
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`methods (UserID/password or biometrics, etc.) are. If it is incorrectly assumed that
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`the authentication system and method of the ‘432 Patent are a financial product or
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`service, then it would make the definition of financial products and services so broad
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`such that all other authentication systems and methods would fall in a financial
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`product and service under AIA § 18(d)(1).
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` Petition further contends that “the specification also explains, the claims
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`pertain to ‘transactions to increase security in e-commerce,’ and ‘for centralized
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`identification and authentication of users’ using ‘personal or financial
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`information’” (emphasis added). (Petition at 12). As already discussed above, (1)
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`electronic transactions are not specific to financial transactions (see J.P. Morgan
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`Chase, at 11); (2) authentication of users is not a CBM patent (see id. at 3, 12); and
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`(3) the specification does not particularly limit the claimed method to the financial
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`services sector (see id. at 12).
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` Petitioner’s argument fails to carry its burden to show any link between the
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`specification, let alone the claims, and a “financial product or service.” As the Board
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`has recognized, the breadth of what constitutes a CBM Patent “has limits and does
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`not cover every method that might be used in a way that is incidental or
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`complementary to a financial activity.” (emphasis original). Id. at 6. See also 157
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`U.S. Patent No. 8,266,432
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`Cong. Rec. S5441 (daily ed. Sept. 8, 2011) (statement of Sen. Leahy) (stating that
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`the definition of a CBM patent is not intended to cover “technologies common in
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`business environments across sectors and that have no particular relation to the
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`financial services sector, such as computers, communications networks, and
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`business software”).
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` The Board has routinely denied institution of CBM where a patent’s claims
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`do not relate to a financial service, and the patent’s specification discusses but does
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`not limit the claims to such services. For example, in J.P. Morgan Chase, the Board
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`refused to institute a CBMR of a patent that related to public key encryption used
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`for securing and authenticating transmissions over unsecure networks. Paper No. 11
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`at 2-3. The petitioner in the J.P. Morgan Chase, a bank, alleged that the challenged
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`patent constituted a CBM Patent because, among other reasons, (1) the specification
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`discloses the claimed technology being used by commercial entities, escrow
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`agencies, clearing houses, and electronic notaries (id. at 7-8), and (2) the claimed
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`technology was “used in nearly all electronic financial transactions” and was
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`involved in “nearly all worldwide electronic credit card transactions.” Id. at 9. The
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`Board rejected these arguments, finding that because the claims “have general utility
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`not limited or specific to any application” and the specification did not limit “the
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`invention to the financial services sector,” the patent was not a CBM Patent. Id. at
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`11-12.
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` Another example is the Board’s decision denying a CBMR in ServiceNow,
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`Inc. v. BMC Software, Inc., CBM2015-00107, Paper No. 12 (PTAB Sept. 11, 2015)
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`(hereinafter “BMC Software”). In BMC Software, the claims were directed to a
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`method for fault analysis but did not recite any step that involved a financial activity.
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`See id. at 10. The petitioner explained that the claimed subject matter was embodied
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`in the specification with respect to a network of automatic teller machines (“ATMs”).
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`See id. at 9. The Board, however, denied institution because the claims were not
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`“tied specifically to a financial product or service,” and while the claims
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`encompassed the ATM embodiment of the specification they did not recite a
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`limitation specific to ATMs. Id. at 10.
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` Similarly, in Hewlett-Packard, the Board denied institution for a patent
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`claiming a system for monitoring conversations in a web service even though the
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`patent specification expressly described an embodiment in which the conversations
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`included “information regarding transactions, such as the amount to be charged and
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`credit card charge authorizations.” Paper No. 10 at 9, 10, 16-18. The Board explained
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`that it is insufficient to “show[] that the claimed system could be used in a financial
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`product or service” and that “the absence of any finance-related limitation in the
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`claims is the primary driver of our determination.” Id. at 17-18 (emphasis added).
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` Still further , in Par Pharm., Inc. v. Jazz Pharm., Inc., CBM2014-00149,
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`Paper No. 12 at 13-14 (PTAB Jan. 13, 2015) (hereinafter “Par Pharm”), the Board
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`U.S. Patent No. 8,266,432
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`denied institution even though the claimed method related to a specific embodiment
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`including the step of verifying a patient’s ability to pay. The claimed invention set
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`forth a method o