throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper No. 14
`
`
` Entered: September 21, 2016
`
`
`
`
`
`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 B2
`____________
`
`
`
`
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`

`
`CBM2016-00064
`Patent 8,266,432 B2
`
`
`INTRODUCTION
`I.
`United Services Automobile Association (“Petitioner”) filed a Petition
`requesting a review of claims 1–55 of U.S. Patent No. 8,266,432 B2
`(Ex. 1001, “the ’432 patent”) under the transitional program for covered
`business method patents.1 Paper 2, “Pet.” Nader Asghari-Kamrani and
`Kamran Asghari-Kamrani (collectively, “Patent Owner”) filed a Preliminary
`Response to the Petition. Paper 11, “Prelim. Resp.” Pursuant to our prior
`authorization (Paper 10, 9), Petitioner filed a Reply to the Preliminary
`Response. Paper 13, “Reply.”
`Under 35 U.S.C. § 324(a), a covered business method patent review
`may not be instituted unless the information presented in the petition, if
`unrebutted, “would demonstrate that it is more likely than not that at least 1
`of the claims challenged in the petition is unpatentable.” Because Patent
`Owner filed a statutory disclaimer of claims 4 and 29, pursuant to 37 C.F.R.
`§ 1.321(a) (Prelim. Resp. 14; Ex. 2001), we decline to institute a review
`based on disclaimed claims 4 and 29. See 37 C.F.R. § 42.207(e) (“No post-
`grant review will be instituted based on disclaimed claims.”).
`For the reasons that follow, we institute a covered business method
`patent review as to claims 1–3, 5–28, and 30–55 (the “challenged claims”)
`of the ’432 patent.
`
`
`1 See § 18(a) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284, 329 (2011) (“AIA”).
`
`2
`
`

`
`CBM2016-00064
`Patent 8,266,432 B2
`
`
`A. Related Matters
`The parties indicate that the ’432 patent is involved in
`Asghari-Kamrani et al. v. United Services Auto. Ass’n, Case No. 2:15-cv-
`00478-RGD-LRL (E.D. Va.), and IPR2015-01842, which has been denied
`institution. Pet. 2; Paper 5, 2. Petitioner also filed another Petition
`challenging the ’432 patent in CBM2016-00063, in which we concurrently
`enter a Decision on Institution. CBM2016-00063, Paper 14.
`
`B. The ’432 Patent
`The ’432 patent relates to “a system and method provided by a
`Central-Entity for centralized identification and authentication of users and
`their transactions to increase security in e-commerce.” Ex. 1001, 2:52–55.
`A central-entity is said to allow a user to purchase goods and services from
`an external-entity (e.g., a merchant) using the user’s digital identity without
`revealing confidential personal or financial information, by generating a
`dynamic, non-predictable and time-dependable secure code for the user per
`the user’s request. Id. at 3:35–40. Examples of central-entities include
`banks and credit card issuing companies. Id. at 2:16–18. In a transaction
`between the user and the external-entity, the user presents his user name and
`secure code as a digital identity to the external-entity for identification. Id.
`at Abs., 2:19–21, 3:19–21, 4:55–58. The external-entity depends on the
`central-entity to identify and authenticate the user and transaction. Id.
`
`3
`
`

`
`CBM2016-00064
`Patent 8,266,432 B2
`
`
`C. Illustrative Claim
`Of the challenged claims, claims 1, 25, 48, and 52 are independent.
`Claims 2, 3, and 5–24 depend ultimately from claim 1; claims 26–28 and
`30–47 depend either directly or indirectly from claim 25; claims 49 and 50
`depend directly from claim 48; and claims 53–55 depend directly from
`claim 52. Claim 1, reproduced below, is illustrative:
`1. A method for authenticating a user during an electronic
`transaction between the user and an external-entity, the method
`comprising:
`receiving electronically a request for a dynamic code for the user
`by a computer associated with a central-entity during the
`transaction between the user and the external-entity;
`generating by the central-entity during the transaction a dynamic
`code for the user in response to the request, wherein the dynamic
`code is valid for a predefined time and becomes invalid after
`being used;
`providing by the computer associated with the central-entity said
`generated dynamic code to the user during the transaction;
`receiving electronically by the central-entity a request for
`authenticating the user from a computer associated with the
`external-entity based on a user-specific information and the
`dynamic code as a digital identity included in the request which
`said dynamic code was received by the user during the
`transaction and was provided to the external-entity by the user
`during the transaction; and
`authenticating by the central-entity the user and providing a
`result of the authenticating to the external-entity during the
`transaction if the digital identity is valid.
`Ex. 1001, 6:24–47 (emphasis added).
`
`4
`
`

`
`CBM2016-00064
`Patent 8,266,432 B2
`
`
`D. Standing to Seek a Covered Business Method Patent Review
`Section 18 of the AIA governs covered business method patent
`reviews. Section 18(a)(1)(B) of the AIA limits such reviews to persons or
`their privies that have been sued or charged with infringement of a covered
`business method patent. Here, Petitioner certifies that it has been sued for
`infringement of the ’432 patent in Asghari-Kamrani et al. v. United Services
`Auto. Ass’n, Case No. 2:15-cv-00478-RGD-LRL (E.D. Va.). Pet. 2. On this
`record, we are persuaded that Petitioner has been sued for infringement for
`purposes of AIA § 18(a)(1)(B).
`
`1. Financial Product or Service
`A “covered business method patent” is a patent that “claims a method
`or corresponding apparatus for performing data processing or other
`operations used in the practice, administration, or management of a financial
`product or service, except that the term does not include patents for
`technological inventions.” AIA § 18(d)(1). The legislative history of the
`AIA “explains that the definition of covered business method patent was
`drafted to encompass patents ‘claiming activities that are financial in nature,
`incidental to a financial activity or complementary to a financial activity.’”
`Transitional Program for Covered Business Method Patents—Definitions of
`Covered Business Method Patent and Technological Invention, 77 Fed. Reg.
`48,734, 48,735 (Aug. 14, 2012) (Final Rule) (quoting 157 CONG. REC.
`S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer)). The
`legislative history indicates that “financial product or service” should be
`
`5
`
`

`
`CBM2016-00064
`Patent 8,266,432 B2
`
`interpreted broadly. Id. A patent is eligible for review if it has at least one
`claim directed to a covered business method. 77 Fed. Reg. at 48,736
`(Response to Comment 8).
`Here, Petitioner takes the position that the ’432 patent is a covered
`business method patent, arguing that the “method for authenticating a user of
`claim 1 is used for data processing in the practice, administration, and
`management of financial products and services, specifically for processing
`user financial information for electronic purchases.” Pet. 8–11. According
`to Petitioner, the claims of the ’432 patent are directed to “a Central-Entity
`for centralized identification and authentication of users and their
`transactions to increase security and e-commerce.” Id. at 9–11 (citing
`Ex. 1001, 2:51–3:6). Petitioner explains that claim 1 is directed to a method
`for authenticating a user during a transaction between the user and an
`external-entity, and dependent claim 4 (subsequently disclaimed) requires
`that the transaction be a financial transaction. Id.; Ex. 1001, 6:24–47, 6:61–
`62.
`
`Patent Owner counters that the claims of the ’432 patent are not
`directed to a financial product or service, arguing that the challenged claims
`do not contain “a single element related to a ‘financial product or service.’”
`Prelim. Resp. 8–21 (emphasis omitted). According to Patent Owner, the
`claims are “of ‘general utility,’ i.e., they recite a particular novel technique
`for authenticating a user during an electronic transaction between the user
`and an external-entity without restricting the field of use of the claimed
`
`6
`
`

`
`CBM2016-00064
`Patent 8,266,432 B2
`
`invention to the financial sector or financial activity.” Id. at 12–21. Patent
`Owner also urges us not to consider disclaimed claims 4 and 29. Id. at 14.
`Upon consideration of the parties’ contentions and supporting
`evidence, we are not persuaded by Patent Owner’s arguments. Rather, we
`determine that Petitioner has established sufficiently that at least claim 1 of
`the ’432 patent recites a method for performing data processing or other
`operations used in the practice, administration, or management of a financial
`product or service.
`Claim 1 recites a method “for authenticating a user during an
`electronic transaction between the user and an external-entity”2 and requires
`each recited method step to be performed “during the transaction.”
`Ex. 1001, 6:24–26 (emphases added). Turning to the Specification of the
`’432 patent to assess the scope of that language, we note that the
`Specification consistently describes the “electronic transaction between the
`user and an external-entity” in a financial context for purchasing goods or
`services in e-commerce. See, e.g., id. at 1:22–25; 1:61–65; 2:52–55. The
`Specification expressly defines the claim term “user” to “represent both a
`typical person consuming goods and services as well as a business
`consuming goods and services.” Id. at 2:10–12 (emphases added). The
`Specification also explicitly defines the claim term “external-entity” as “any
`party offering goods or services that users utilize by directly providing their
`
`
`2 The parties, at this juncture, do not dispute that the preamble of each
`independent claim is a claim limitation. For purposes of this decision, we
`proceed on the assumption that it is.
`
`7
`
`

`
`CBM2016-00064
`Patent 8,266,432 B2
`
`UserName and SecureCode as digital identity.” Id. at Abs.; 2:19–21
`(emphasis added). In fact, the Specification specifically explains that the
`purported “invention relates to a system and method provided by a
`Central-Entity for centralized identification and authentication of users and
`their transactions to increase security in e-commerce,” allowing the users “to
`purchase goods and services from an External-Entity using their digital
`identity, preferably without revealing confidential personal or financial
`information.” Id. at 2:52–55, 3:35–40 (emphases added). Examples of
`Central-Entities include banks and credit card issuing companies. Id. at
`2:16–18. In short, the claimed “electronic transaction between the user and
`an external-entity” encompasses sales of goods or services in e-commerce,
`and the terms “user” and “external-entity,” as Patent Owner has expressly
`defined them in the Specification, show that claim 1 pertains to the offering,
`and consumption, of goods and services via an electronic transaction
`between two parties.
`Significantly, sales of goods or services in e-commerce are activities
`that are financial in nature, and allowing secured electronic sales
`transactions amounts to providing a financial service. See SightSound
`Techs., LLC v. Apple Inc., 809 F.3d 1307, 1315 (Fed. Cir. 2015) (a financial
`activity (e.g., electronic sales of digital audio) not directed to money
`management or banking can constitute a “financial product or service”
`within the meaning of the statute). Therefore, claim 1 of the ’432 patent
`recites a method for performing data processing or other operations used in
`the practice, administration, or management of a financial service.
`
`8
`
`

`
`CBM2016-00064
`Patent 8,266,432 B2
`
`
`We are not persuaded by Patent Owner’s argument that the challenged
`claims are “of ‘general utility’ . . . without restricting the field of use of the
`claimed invention to the financial sector or financial activity.” Prelim. Resp.
`12. Although we do not consider disclaimed claims 4 and 29, we
`nevertheless focus on the particular language of claim 1 to determine its full
`scope, as construed in light of the Specification. See Blue Calypso LLC v.
`Groupon, Inc., 815 F.3d 1331, 1338–40 (Fed. Cir. 2016). As discussed
`above, the Specification of the ’432 patent consistently describes its
`purported invention as directed to a method and system for allowing secured
`electronic sales transactions in e-commerce, and expressly provides
`definitions for several claim terms that are financial in nature. Ex. 1001,
`2:10–55, 3:35–40. Claim 1, as construed in light of the Specification,
`encompasses transactions of purchasing goods or services by a consumer
`from a party offering goods or services.
`Moreover, we decline to apply an exclusivity test, as urged by the
`Patent Owner, in view of the legislative history indicating that the definition
`of “covered business method patent” should be interpreted broadly “to
`encompass patents claiming activities that are financial in nature, incidental
`to a financial activity or complementary to a financial activity.” See 77 Fed.
`Reg. at 48,735 (quoting 157 CONG. REC. S5432 (daily ed. Sept. 8, 2011)
`(statement of Sen. Schumer)); see also Sally Beauty Holdings, Inc. v.
`Intellectual Ventures I LLC, Case CBM2016-00029, slip op. at 7–8 (PTAB
`Aug. 2, 2016) (Paper 12) (explaining that, given the legislative history of the
`AIA, an “exclusive to the financial sector” test is not a proper inquiry in
`
`9
`
`

`
`CBM2016-00064
`Patent 8,266,432 B2
`
`determining whether a patent is eligible for a covered business method
`patent review). More importantly, our reviewing court has “declined to limit
`the application of CBM review to patent claims tied to the financial sector.”
`Blue Calypso, 815 F.3d at 1338; see also Versata Dev. Grp. Inc. v. SAP Am.,
`Inc., 793 F.3d 1306, 1325 (Fed. Cir. 2015) (concluding that the statute “on
`its face covers a wide range of finance-related activities” and that “the
`definition of ‘covered business method patent’ is not limited to products and
`services of only the financial industry, or to patents owned by or directly
`affecting the activities of financial institutions such as banks and brokerage
`houses”).
`For the foregoing reasons, we determine that Petitioner has
`demonstrated sufficiently that claim 1 of the ’432 patent is directed to a
`method for performing data processing used in the practice, administration,
`or management of a financial product or service. Consequently, the ’432
`patent satisfies the “financial product or service” component of the
`definition for a covered business method patent under § 18(d)(1) of the AIA.
`
`2. Technological Invention Exception
`The definition of “covered business method patent” in § 18(d)(1) of
`the AIA excludes patents for “technological inventions.” When determining
`whether a patent is excluded under this exception, we consider “whether the
`claimed subject matter as a whole recites a technological feature that is
`novel and unobvious over the prior art; and solves a technical problem using
`a technical solution.” 37 C.F.R. § 42.301(b). Both prongs must be satisfied
`
`10
`
`

`
`CBM2016-00064
`Patent 8,266,432 B2
`
`in order for the patent to be excluded as a technological invention. See 157
`CONG. REC. S1364 (daily ed. Mar. 8, 2011) (Sen. Schumer stated the
`“‘technological invention’ exception only excludes those patents whose
`novelty turns on a technological innovation over the prior art and are
`concerned with a technical problem which is solved with a technical
`solution”) (emphases added). Therefore, a patent would not be excluded as
`a technological invention if one of the prongs is deficient.
`The following claim drafting techniques, for example, typically do not
`render a patent a technological invention:
`(a) Mere recitation of known technologies, such as
`computer hardware, communication or computer networks,
`software, memory, computer-readable
`storage medium,
`scanners, display devices or databases, or specialized machines,
`such as an ATM or point of sale device.
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method
`is novel and non-obvious.
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763–64
`(Aug. 14, 2012).
`Here, Petitioner asserts that the ’432 patent is not directed to a
`technological invention, and, thus, should not be excluded from the
`definition of a covered business method patent. Pet. 11–15. In Petitioner’s
`view, the Specification confirms that the computer-related limitations recited
`in the claims are merely standard computer features. Id. at 13 (citing
`Ex. 1001, 5:5–10, 4:67–5:4).
`
`11
`
`

`
`CBM2016-00064
`Patent 8,266,432 B2
`
`
`Patent Owner counters that the claimed subject matter as a whole
`recites a technological invention, arguing that the claims recite novel and
`non-obvious technological features and provide a technical solution to a
`technical problem. Prelim. Resp. 21–36. In particular, Patent Owner alleges
`that Petitioner’s failure to establish that the claims were anticipated or
`obvious in IPR2015-01842, involving the same challenged claims, confirms
`that the claims are novel and unobvious. Id. at 22.
`However, the prior art of record here is materially different from the
`prior art in IPR2015-01842. Here, in contrast to that record, Petitioner has
`demonstrated, as discussed below, that it is more likely than not that the
`challenged claims are unpatentable based on the prior art of record in the
`instant proceeding. Therefore, the failure to establish unpatentability in the
`prior proceeding does not support Patent Owner’s contention here that the
`claims recite novel and non-obvious technological features.
`Patent Owner also alleges that the following claim elements are novel
`technological features: a centralized authentication system (central-entity),
`the digital identity (user specific information and dynamic code), and the
`communication between the centralized system, external-entity, and user
`during a transaction. Id. at 31–36. As discussed below, however, these
`features appear to have been known in the art, in light of the prior art in this
`record. See, e.g., Ex. 1032. Indeed, they merely utilize generic computers.
`See Ex. 1001, 6:27–30 (“a computer associated with a central-entity”). And,
`using user specific information (e.g., a user name) and a dynamic code (e.g.,
`a one-time password) for authenticating a user was known in the art at the
`
`12
`
`

`
`CBM2016-00064
`Patent 8,266,432 B2
`
`time of the invention. See, e.g., Ex. 1032 ¶¶ 9, 48. Reciting the use of
`known prior art features to perform a method does not render a patent a
`technological invention. Moreover, Petitioner explains sufficiently why
`claim 1, as a whole, does not recite a technological feature that is novel and
`non-obvious over the prior art of record. Pet. 26–49 (explaining how
`claim 1, as a whole, is obvious over Nicholson and Brown). Claim 1 is
`merely the recitation of known technologies to perform a method, which
`indicates that it is not a patent for a technological invention. See Office
`Patent Trial Practice Guide, 77 Fed. Reg. at 48,764 (examples (a) and (b),
`which are reproduced above).
`In view of the foregoing, we are persuaded by Petitioner’s explanation
`that claim 1, as a whole, does not recite a technological feature that is novel
`and non-obvious over the prior art. See Pet. 11–15, 27–42. Because one of
`the prongs set forth in 37 C.F.R. § 42.301(b), for determining whether a
`patent is a technological invention, is deficient, it is not necessary for us to
`address the parties’ arguments regarding whether the claimed subject matter
`solves a technical problem using a technical solution. Pet. 13–15; Prelim.
`Resp. 23–31. Accordingly, the ’432 patent is not excluded as a
`technological invention.
`
`3. Conclusion
`For the foregoing reasons, we conclude that the ’432 patent is a
`covered business method patent under AIA § 18(d)(1) and is eligible for
`review using the transitional covered business method patent program.
`
`13
`
`

`
`CBM2016-00064
`Patent 8,266,432 B2
`
`
`
`
`E. Prior Art Relied Upon
`Petitioner relies upon the following prior art references:
`
`Nicholson US 2007/0022301 A1
`Jan. 25, 2007
`Brown
`US 5,740,361
`
`Apr. 14, 1998
`F. Asserted Ground of Unpatentability
`
`(Ex. 1034)
`(Ex. 1035)
`
`Petitioner asserts the following ground of unpatentability (Pet. 2):
`
`Challenged Claims
`
`Basis
`
`References
`
`1–3, 5–28, and 30–55
`
`§ 103(a)3 Nicholson and Brown
`
`II. ANALYSIS
`A. Claim Construction
`In a covered business method patent review, claim terms in an
`unexpired patent are interpreted according to their broadest reasonable
`construction in light of the specification of the patent in which they appear.
`37 C.F.R. § 42.300(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2144–46 (2016) (adopting the broadest reasonable interpretation standard
`was a reasonable exercise of the Office’s rulemaking authority). Under the
`broadest reasonable interpretation standard, claim terms generally are given
`
`
`3 Because the challenged claims have a filing date prior to March 16, 2013,
`the effective date of AIA, we apply the pre-AIA version of 35 U.S.C. § 103
`in this Decision.
`
`14
`
`

`
`CBM2016-00064
`Patent 8,266,432 B2
`
`their ordinary and customary meaning, as would be understood by one of
`ordinary skill in the art in the context of the entire disclosure. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor
`may rebut that presumption by providing a definition of the term in the
`specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Here, the Specification of the ’432 patent expressly sets forth
`definitions (reproduced below) for the following claim terms:
`
`Claim Term
`
`Definition as set forth in Specification
`
`“user”
`
`“external-entity”
`
`“central-entity”
`
`a person or business consuming goods and services
`(Ex. 1001, 2:10–12)
`
`any party offering goods or services that users
`utilize by directly or indirectly providing their
`UserName and SecureCode as digital identity (id. at
`2:19–26)
`any party that has a user’s personal and/or financial
`information, UserName, and Password, and
`generates a dynamic, non-predictable and time
`dependable SecureCode for the user (id. at 2:13–16)
`
`“SecureCode” is defined as any dynamic,
`non-predictable and time dependent alphanumeric
`code, secret code, PIN or other code, which may be
`broadcast to the user over a communication
`network, and may be used as part of a digital
`identity to identify a user as an authorized user
`(id. at 2:35–40)
`
`15
`
`

`
`CBM2016-00064
`Patent 8,266,432 B2
`
`
`Claim Term
`
`Definition as set forth in Specification
`
`“digital identity”
`
`a combination of a user’s SecureCode and the user’s
`information such as UserName, which may result in
`a dynamic, non-predictable and time dependable
`digital identity that could be used to identify a user
`as an authorized user (id. at 2:41–45)
`
`For purposes of this Decision, we interpret the terms above in
`accordance with their definitions in the Specification. Petitioner also
`proposes constructions for several other claim terms. Pet. 4–8. At this
`juncture, Patent Owner does not proffer any proposed claim constructions.
`Prelim. Resp. 36–37. Nor does it challenge Petitioner’s proposed claim
`constructions. Id. We note that only those claim terms and elements which
`are in controversy need to be construed, and only to the extent necessary to
`resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999). For purposes of this Decision, we find
`it necessary to address only the claim term “dynamic code.”
`“dynamic code”
`The claim term “dynamic code” appears in claims 1, 25, 48, and 52.
`For instance, claim 1 recites “receiving electronically a request for a
`dynamic code for the user by a computer associated with a central-entity
`during the transaction between the user and the external-entity.” Ex. 1001,
`6:27–30 (emphasis added). Petitioner proposes to construe the claim term
`“dynamic code” to include a “dynamic, non-predictable and time dependent
`alphanumeric code, secret code, PIN or other code, which may be broadcast
`
`16
`
`

`
`CBM2016-00064
`Patent 8,266,432 B2
`
`to the user over a communication network, and may be used as a part of a
`digital identity to identify a user as an authorized user.” Pet. 8.
`However, Petitioner’s proposed construction of “dynamic code,”
`which itself uses the adjective “dynamic” and includes “PIN or other code,”
`would render the word “dynamic” in the claim term “dynamic code”
`insignificant, if not wholly superfluous. We decline to adopt such a claim
`construction because “[c]laims are interpreted with an eye toward giving
`effect to all terms in the claim.” Cat Tech LLC v. TubeMaster, Inc., 528
`F.3d 871, 885 (Fed. Cir. 2008) (quotation omitted); see also Aristocrat
`Techs. Australia Pty Ltd. v. Int’l Game Tech., 709 F.3d 1348, 1356–57 (Fed.
`Cir. 2013) (declining to adopt the appellants’ proposed construction because
`it would render another limitation “superfluous”); cf. Microsoft Corp. v.
`Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (noting that the
`Board may not “construe claims during IPR so broadly that its constructions
`are unreasonable under general claim construction principles”).
`Moreover, Petitioner’s proposed construction for the claim term
`“dynamic code” is the definition for the term “SecureCode” in the
`Specification of the ’432 patent, and it is not a definition for the claim term
`“dynamic code.” Ex. 1001, 2:35–40. As defined, a SecureCode could be a
`dynamic code or “PIN or other code,” but that definition does not support
`Petitioner’s proposed claim construction that a dynamic code may merely be
`a “PIN or other code.”
`In the context of the challenged claims, a dynamic code is generated
`and used for authenticating a user in response to the user’s request during a
`
`17
`
`

`
`CBM2016-00064
`Patent 8,266,432 B2
`
`transaction between the user and an external-entity. See, e.g., Ex. 1001,
`6:31–35. On this record, we construe the claim term “dynamic code” to
`encompass an “alphanumeric code that is non-predictable and time
`dependent, which may be broadcast to the user over a communication
`network, and may be used as a part of a digital identity to identify a user as
`an authorized user,” in light of the Specification and claim language.
`
`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`C. Level of Ordinary Skill
`
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`18
`
`

`
`CBM2016-00064
`Patent 8,266,432 B2
`
`(citation omitted). Petitioner’s declarant, Seth Nielson, Ph.D., testifies that a
`person with ordinary skill in the art “would have had a Bachelor of Science
`Degree in Electrical Engineering, Computer Engineering, or Computer
`Science with related work experience.” Ex. 1003 ¶ 26. Based on the current
`record, we agree and apply that level of ordinary skill in the art for purposes
`of this Decision. We further note that the prior art of record in the instant
`proceeding reflects the appropriate level of ordinary skill in the art. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (“the prior
`art itself reflects an appropriate level” of ordinary skill in the art).
`
`D. Effective Filing Date of the ’432 Patent
`The parties dispute whether the ’432 patent is entitled to the benefit of
`an earlier effective filing date of August 29, 2001. Pet. 15–28; Prelim. Resp.
`37–76; Reply 1–5. Here, following Petitioner’s showing that Nicholson
`constitutes prior art relative to the actual filing date of the ’432 patent, the
`burden of production shifted to Patent Owner to show that the challenged
`claims of the ’432 patent are entitled to the benefit of the earlier effective
`filing date, prior to the relevant dates of Nicholson. See Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir.
`2015) (“The burden of production then shifted to [Patent Owner] to argue or
`produce evidence that either [the reference] does not actually anticipate, or,
`as was argued in this case, that [the reference] is not prior art because the
`asserted claims in the [involved] patent are entitled to the benefit of a filing
`date (constructive or otherwise) prior to the filing date of [the reference].”);
`
`19
`
`

`
`CBM2016-00064
`Patent 8,266,432 B2
`
`see also PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed.
`Cir. 2008) (“When neither the PTO nor the board has previously considered
`priority, there is simply no reason to presume that claims in a
`[continuation-in-part] application are entitled to the effective filing date of
`an earlier filed application.”).
`The application that issued as the ’432 patent has an actual filing date
`of September 15, 2008. Ex. 1001 at [22]. On this record, that application
`claims the benefit, as a continuation-in-part application4, of the following
`two prior-filed non-provisional applications (id. at [63], 1:6–17; Paper 8, 2):
`(1) U.S. Patent Application No. 09/940,635 (Ex. 1016, “the first
`prior-filed application”), which was filed on August 29, 2001, and issued as
`U.S. Patent No. 7,356,837 B2 on April 8, 2008 (Ex. 1005 at [22], [45]); and
`(2) U.S. Patent Application No. 11/239,046 (Ex. 1014, “the second
`prior-filed application”), which was filed on September 30, 2005, and issued
`as U.S. Patent No. 7,444,676 B1 on October 28, 2008 (Ex. 1015 at [22],
`[45], “the ’676 patent”).
`As an initial matter, we observe that there is no copendency between
`the first prior-filed application, which was issued as a patent on
`April 8, 2008, and the application that issued as the ’432 patent, which was
`filed on September 15, 2008. Compare Ex. 1001 at [22], with Ex. 1005 at
`
`
`4 Although, on its face, the ’432 patent claims the benefit of these prior-filed
`applications, as a continuation, Patent Owner confirms that the application
`that issued as the ’432 patent actually is a continuation-in-part application of
`these prior-filed applications. Ex. 1001 at [63], 1:6–17; Paper 8, 2.
`20
`
`

`
`CBM2016-00064
`Patent 8,266,432 B2
`
`[45]; Ex. 2005, 1. Under 35 U.S.C. § 120, the application that issued as the
`’432 patent is required to be filed before the patenting or abandonment of the
`first prior-filed application, unless there is an intermediate application that
`meets the requirements of § 120. Patent Owner takes the position that either
`the second prior-filed application, or U.S. Patent Appli

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket