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 REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE
`
`
`
`
`
`
`______________________
`
`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 REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE
`
`
`
`
`
`
`
`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. 11/333,400 on January 18, 2006
`
`USAA-1048
`
`USAA-1049
`
`USAA-1050
`
`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
`
`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
`
`Declaration of Dr. Seth Nielson Regarding the Claim to the
`Benefit of the Filing Date of U.S. Patent Application Serial No.
`11/333,400
`
`USAA-1051
`
`U.S. Patent Application Serial No. 11/333,400 (the ‘400 App.)
`
`USAA-1052
`
`RESERVED
`
`USAA-1053
`
`
`
`
`Excerpts from the Prosecution History of U.S. Patent No.
`8,281,129 (“the ’129 Patent”)
`
`
`
`iv
`
`
`
`CBM2016-00064
`Patent 8,266,432
`
`
`The ’432 Patent is not entitled to claim priority to Application No. 11/333,400
`
`(“the ’400 App.”). PO fails to meet its burden, both in failing to show that the entire
`
`delay by PO in claiming the benefit under 35 U.S.C. 120 was unintentional, and in
`
`failing to demonstrate support for the claims of the ’432 Patent in the ‘400 App. See
`
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008).
`
`I. PO Fails to Show the Entire Delay in Claiming Priority Was Unintentional
`
`A PO who seeks to add a delayed priority claim may do so only if PO can
`
`demonstrate that “the entire delay between the date the benefit claim was due … and
`
`the date the benefit claim was filed was unintentional.” MPEP §211 (emphasis
`
`added). In dismissing PO’s 8/8/2016 Petition to Accept an Unintentionally Delayed
`
`Benefit Claim, the Petitions Branch recognized that at least one prosecuting firm
`
`knew of both the instant application and the ‘400 App.1 The Office, thus questioning
`
`the existence of the “unintentional delay” that PO has alleged, stated:
`
`the entire delay…was not unintentional if Law Firm 1, Law Firm 2, or Law
`Firm 3 made the choice not to file any of the claims at any point when han-
`dling prosecution of the application. At least one of the prior law firms was
`aware of the existence of both the instant application and Application No.
`
`
`1 As of the time of this filing, PO has not filed an amended petition. Because of the
`
`delay, Petitioner will have no opportunity to address PO’s amended petition, mak-
`
`ing it additionally unfair for the Board to consider PO’s untimely priority claim.
`
`
`
`1
`
`
`
`CBM2016-00064
`Patent 8,266,432
`
`
`11/333,400. Specifically, a power of attorney to Law Firm 3 was filed on the
`same date in the instant application and in Application No. 11/333,400.
`
`PO’s Exhibit 2005 at 4-5. In the face of these facts, PO nonetheless alleges that it
`
`only recently “discovered on or about July 6, 2016” the existence of the purported
`
`second chain of claiming benefit under Section 120. That cannot be true. The PO
`
`must have been aware of its own copending ‘400 App. Indeed, on 12/12/2011, PO
`
`terminally disclaimed the ’400 App. to the application for the ’432 Patent, demon-
`
`strating PO’s knowledge of both. 1041. And, as the Office notes, powers of attorney
`
`were filed on the same day by the same patent counsel in both the ’400 App. and the
`
`application that issued as the ’432 Patent, and both were signed by Applicants Nader
`
`Asghari-Kamrani and Kamran Asghari-Kamrani. 1002 at 516-17; 1053 at 510-11.
`
`Thus, the record demonstrates that PO was aware of both applications at these
`
`earlier times and that PO considered the relative subject matter of the two applica-
`
`tions (when filing its terminal disclaimer), but that PO chose not to claim priority.
`
`PO offers nothing to prove that its delay of nearly 8 years was unintentional.
`
`II. PO Disclaimed This Priority Chain by Filing a Non-Publication Request
`
`By signing and filing a non-publication request (NPR) for the ’400 App., PO
`
`admitted that the ‘400 App. discloses a different invention than the Grandparent.
`
`1047. PO has thus expressly disclaimed the existence of priority extending through
`
`the ’400 App. and confirmed that the failure to claim priority was intentional. While
`
`
`
`2
`
`
`
`CBM2016-00064
`Patent 8,266,432
`
`the PO attempts to diminish its NPR disclaimer by contending that “[t]here is no
`
`mechanism before the PTO that Applicants can submit a non-publication request
`
`only for the portions in which have newly added subject matter in view of the parent”
`
`(POPR at 75), the Office actually does provide a mechanism for redacted publication
`
`when PO believes that its prior foreign-filed application (see 1028 at 1, filed in 2002
`
`as a PCT application of the Grandparent) contains less extensive disclosure than a
`
`later application (see 1051 filed in 2006 claiming to be a CIP of the Grandparent).
`
`See MPEP §1132 (“Requests for Redacted Publication”); 1050 at ¶27. PO filed the
`
`NPR, and the admission it contains, by choice.
`
`III. PO Fails to Meet Its Burden of Proof for Showing the Requisite Support
`
`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 application. See Studieng-
`
`esellschaft Kohle, M.B.H. v. Shell Oil Co., 112 F.3d 1561, 1564 (Fed. Cir. 1997)
`
`(applicant must “meet the disclosure requirement of [35 U.S.C.] § 112, ¶ 1 in a single
`
`parent application in order to obtain an earlier filing date for individual claims”). PO
`
`fails to establish that the claims of the ’432 Patent are adequately supported by
`
`the’400 App. to satisfy the requirement of 35 U.S.C. § 112, ¶1; 1050 at ¶¶28, 35.
`
`Because PO fails to provide charts for claims other than claims 1, 25, and 48,
`
`(and claim 52 by reference), PO fails to meet its burden of proof to establish that
`
`those other claims of the ’432 Patent are supported by the disclosure of the ’400 App.
`
`
`
`3
`
`
`
`CBM2016-00064
`Patent 8,266,432
`
`1050 at ¶29. Thus, by virtue of PO’s omission, claims 2-24, 26-47, 49-51, and 53-
`
`55 should not be entitled to the benefit of the filing date of the ’400 App. Even in
`
`the charts provided for claims 1, 25, and 48, PO fails to show support for all claim
`
`elements of claims 1, 25, 48, and 52, including all of the features of the claimed
`
`“dynamic code.” 1050 at ¶¶30-31. Acknowledging the lack of support in the ‘400
`
`App. specification for the claimed separate “central-entity” computers, PO attempts
`
`to cite claim 46 from the issued patent. However, this claim was not part of the
`
`originally filed disclosure, having been added during prosecution (originally claim
`
`57).2 As the MPEP states, “to be entitled to an earlier priority date or filing date
`
`under 35 U.S.C. 119, [or] 120, … each claim limitation must be expressly, implicitly,
`
`or inherently supported in the originally filed disclosure.” §2163(II)(A)(3)(b) (em-
`
`phasis added). Instead, PO relies on claim amendments entered years after the filing
`
`date of the ’400 App., which are subject to the scrutiny of written description support
`
`that PO has not provided. 1050 at ¶32. PO also fails to account for several variations
`
`
`2 Although claim 57 was first introduced in an amendment on 6/8/2010, it was not
`
`until an Examiner’s Amendment issued with the Notice of Allowance on
`
`5/17/2012 that claim 57, which issued as claim 46, was amended to include “a first
`
`computer” and “a second computer” performing the claimed functions in their is-
`
`sued form. 1053 at 473, 44-46.
`
`
`
`4
`
`
`
`CBM2016-00064
`Patent 8,266,432
`
`among the four independent claims, ignoring the ramifications of claim differentia-
`
`tion by, for example, inaccurately characterizing claim 25 as a method claim to
`
`which the apparatus of claim 52 corresponds. POPR at 74. Rather, independent
`
`claim 25 is an apparatus claim, and claim 52 has different language and elements not
`
`included in claim 25 for which PO fails to provide evidence of support. 1050 at ¶34.
`
`Additionally, the chart PO provides to show support for claim 48 contains text from
`
`claim 1, not claim 48.3 POPR at 71-74. Because the language of claim 48 differs
`
`from claim 1 and includes elements not found in claim 1, PO has not met its burden
`
`to show that every element of claim 48 is supported by the ’400 App. 1050 at ¶33.
`
`For the reasons above, none of the claims of the ’432 patent should be entitled
`
`to claim priority to the ’400 App. Thus, the positions presented in the Petition, re-
`
`questing institution of CBM review and showing that each of the claims in the ’432
`
`Patent is unpatentable, remain valid both because the two alleged priority claims are
`
`invalid and because, as a purported continuation-in-part, PO fails to establish ade-
`
`quate supporting disclosure to rely upon the two alleged priority claims.
`
`
`3 For claim 48, it appears that PO has fabricated a non-existent claim by using the
`
`text from claim 1 with the phrase “wherein the dynamic code is alphanumeric”
`
`added at the end. Petitioner notes that actual claim 48 requires separate “central-
`
`entity” computers, a feature PO appears to agree is absent from the ‘400 App.
`
`
`
`5
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`CBM2016-00064
`Patent 8,266,432
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`Respectfully submitted,
`
`
`
`
` 8/26/2016
`
`
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`Dated:
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`(Control No. CBM2016-00064)
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`/Thomas A. Rozylowicz/
`
`
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`
`
`W. Karl Renner, Reg. No. 41,265
`Thomas A. Rozylowicz, Reg. No. 50,620
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Attorneys for Petitioner
`
`
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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
`
`25, 2016, a complete and entire copy of this Petitioner’s Reply to Patent Owner’s
`
`Preliminary Response, and its exhibits, were provided via email to the Patent
`
`Owner by serving the correspondence email addresses of 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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