Case 2:15-cv-00478-RGD-LRL Document 95 Filed 05/09/16 Page 1 of 26 PageID# 3090
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`NORFOLK DIVISION
`
`NADER ASGHARI-KAMRANI and
`KAMRAN ASGHARI-KAMRANI,
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`Plaintiffs,
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`v.
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`
`Civil Action No. 2:15-cv-00478-RGD-LRL
`
`Hon. Robert G. Doumar
`
`UNITED SERVICES AUTOMOBILE
`ASSOCIATION,
`
`Defendant.
`
`PARTIES’ JOINT STATEMENT ON CLAIM CONSTRUCTION
`
`Pursuant to the Court’s Rule 16(b) Scheduling Order dated May 3, 2016 [Dkt. No. 54],
`
`Plaintiffs Nader Asghari-Kamrani and Kamran Asghari-Kamrani (“Plaintiffs”) and Defendant
`
`United Services Automobile Association (“USAA”) submit this joint statement in anticipation of
`
`a Markman hearing. The patent at issue is U.S. Patent No. 8,266,432.
`
`I.
`
`CLAIM CONSTRUCTIONS TO WHICH THE PARTIES AGREE
`
`At this point, the parties agree on these constructions of claim terms.
`
`Term/Phrase
`“to authenticate a user” /
`“for authenticating a user” /
`“authenticate a user’s identity” /
`“authenticate the user” /
`“authenticating a user” /
`“authenticating the user” /
`“authenticating [by the central-
`entity] the user”
`
`Claims
`All
`
`Construction
`“To determine that a user is who he says he
`is.”
`
`(Where a “user” is not necessarily a human
`individual.)
`
`“alphanumeric”
`
`All
`
`“Including at least one letter and at least
`
`1
`
`USAA 1064
`USAA v Asghari-Kamrani
`CBM2016-00063
`CBM2016-00064
`
`

`

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`Term/Phrase
`
`Claims
`
`Construction
`one number.”
`
`
`
`II.
`
`EACH SIDE’S CONSTRUCTION OF DISPUTED CLAIM TERMS
`
`The parties’ proposed constructions of disputed terms are identified in Appendix A
`
`hereto.
`
`Plaintiffs contend that the Rule 16(b) Scheduling Order did not request “USAA's
`
`Evidence” and “Plaintiffs’ Evidence” for their claim construction positions at this time, apart
`
`from a summary/outline of any witness testimony. Accordingly, Plaintiffs will set forth the
`
`intrinsic and extrinsic evidence supporting their claim constructions in their Markman briefs.
`
`III. EACH SIDE’S REBUTTAL TO THE OPPOSING PARTY’S PROPOSED
`CONSTRUCTION
`
`A. Plaintiffs’ Rebuttal
`
`USAA’s claim constructions are based on a number fundamental errors in the law of
`
`claim construction. First, USAA improperly reads limitations from the specification into the
`
`claims. Phillips v. AWH Corp., 415 F.3d 1303, 1319-20 (Fed. Cir. 2005) (en banc) (quoting
`
`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1340 (Fed. Cir.
`
`2001) (describing reading limitations from the specification into the claims as a “cardinal sin” of
`
`patent law). USAA’s claim constructions tend to read claim terms as incorporating every single
`
`limitation that USAA can find disclosed in the specification, which is erroneous.
`
`USAA also misreads the prosecution history for disavowals of claim scope where there is
`
`plainly none. Disavowal, or disclaimer of claim scope, is only considered when it is clear and
`
`unmistakable. See SciMed Life Sys., , 242 F.3d at 1341; see also In re Am. Acad. Of Sci. Tech
`
`Ctr., 367 F.3d 1359, 1365-67 (Fed. Cir. 2004) (refusing the limit claim term “user computer” to
`
`only “single-user computers” even though “some of the language of the specification, when
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`viewed in isolation, might lead a reader to conclude that the term . . . is meant to refer to a
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`computer that serves only a single user, the specification as a whole suggests a construction that
`
`is not so narrow”).
`
`USAA’s citations to expert witness testimony are extrinsic evidence and should therefore
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`only be considered after intrinsic evidence. Phillips, 415 F.3d at 1317-18. Furthermore, expert
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`witness testimony in regard to claim construction is even less than reliable than objective
`
`extrinsic evidence such as technical dictionaries, since expert witness testimony may be biased
`
`and self-serving.
`
`For most of the apparently disputed claim language, the terms should be given their plain
`
`and ordinary meaning. Phillips, 415 F.3d at 1312-13 (citing Vitronics Corp. v. Conceptronic,
`
`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
`
`Since Plaintiffs only received USAA’s claim construction arguments minutes before the
`
`filing deadline, they will rebut USAA’s claim constructions in detail in the Markman briefing.
`
`B. USAA’s Rebuttal
`
`a. transaction
`
`Plaintiffs contend that this term should be understood according to its ordinary meaning,
`
`and that USAA’s proposed construction is not within that ordinary meaning. But Plaintiffs have
`
`already conceded in filings with the Patent Office in an Inter Partes Review of the patent-in-suit
`
`that USAA’s is the “broadest reasonable interpretation” of the term “transaction.” Having made
`
`that admission, Plaintiffs may not now be seen to broaden this term in an attempt to reclaim
`
`scope that that they have previously surrendered. E.g., TomTom, Inc. v. Adolph, 790 F.3d 1315,
`
`1325 (Fed. Cir. 2015) (“where the patentee has unequivocally disavowed a certain meaning to
`
`obtain his patent, the doctrine of prosecution disclaimer attaches and narrows the ordinary
`
`meaning of the claim congruent with the scope of the surrender”); InTouch Techs., v. VGO
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`Comms., Inc., 751 F.3d 1327, 1341-42 (Fed. Cir. 2014) (explaining that the reexamination
`
`history is part of the prosecution history); Grober, , 686 F.3d at 1341 (applying doctrine of
`
`prosecution disclaimer to reexamination proceedings); Aylus Networks, Inc. v. Apple, Inc., 2016
`
`WL 270387 at *5 (N.D. Cal. January 21, 2016) (holding that Patentee’s statements in a
`
`Preliminary Patent Owner Response, like relied on here, “are akin to a prosecution disclaimer”
`
`under which the “patentee is held to what he declares during the prosecution of his patent”).
`
`b. dynamic code
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`Plaintiffs’ proposal of “a substantially nonpredictable and temporary digital code” fails
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`for a number of reasons. First, use of the term “substantially” in this manner renders their
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`proposed construction indefinite. Second, Plaintiffs admitted in the Inter Partes Review
`
`proceeding, “[t]he term ‘dynamic code’ has a substantially similar scope with ‘SecureCode’ as
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`defined in the specification.” USAA’s proposed construction tracks the definition is the
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`specification of the ’432 Patent at 2:35-40, with a few tweaks for clarity. Third, Plaintiffs have
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`already admitted in the Inter Partes Review that the broadest reasonable interpretation of the
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`term “dynamic code” is “any dynamic, non-predictable and time dependent alphanumeric code,
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`secret code, PIN or other code, which may be broadcasted to the user over a communication
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`network, and may be used as part of a digital identity to identify a user as an authorized user.”
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`E.g., TomTom, Inc. v. Adolph, 790 F.3d 1315, 1325 (Fed. Cir. 2015) (“where the patentee has
`
`unequivocally disavowed a certain meaning to obtain his patent, the doctrine of prosecution
`
`disclaimer attaches and narrows the ordinary meaning of the claim congruent with the scope of
`
`the surrender”); InTouch Techs., v. VGO Comms., Inc., 751 F.3d 1327, 1341-42 (Fed. Cir. 2014)
`
`(explaining that the reexamination history is part of the prosecution history); Grober, , 686 F.3d
`
`at 1341 (applying doctrine of prosecution disclaimer to reexamination proceedings); Aylus
`
`Networks, Inc. v. Apple, Inc., 2016 WL 270387 at *5 (N.D. Cal. January 21, 2016) (holding that
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`Patentee’s statements in a Preliminary Patent Owner Response, like relied on here, “are akin to a
`
`prosecution disclaimer” under which the “patentee is held to what he declares during the
`
`prosecution of his patent”). Finally, Plaintiffs have admitted that any given code is only used
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`once. Mar. 8, 2016 Hrg. Tr. at 11:16-20 (“Every time you generate a code, it’s a new code.”);
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`accord POPR at 23; ’432 file history, Page 17 of 8/10/10 Office Action Response; ’837 file
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`history, Pages 7, 9 of 8/30/05 Office Action Response.
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`c. central-entity and external-entity
`
`Plaintiffs’ constructions of these terms are overbroad because they pay no mind to the
`
`intrinsic record. Plaintiffs’ first mistake is that they ignore that their own patent defines these
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`terms. See Plaintiffs’ Patent Owner’s Preliminary Response (“POPR”) in IPR2015-01842 at 11
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`(admitting that the ’432 patent defines these terms). At column 2, lines 13-26 and lines 52-63,
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`the Court will find that the ’432 patent provides explicit definitions for these terms, which are
`
`irreconcilable with Plaintiffs’ constructions. It would be error for this Court to ignore the
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`Patentees’ own definitions of these terms and for that reason alone, Plaintiffs’ constructions are
`
`improper. E.g., Jack Guttman, Inc. v. Kopykake Enterprises, Inc., 302 F.3d 1352, 1360–61 (Fed.
`
`Cir. 2002).
`
`Plaintiffs’ constructions err not just in failing to account for the requirements of a
`
`“central-entity” and “external-entity” set out in the ’432 patent, but also by adding a requirement
`
`that makes no sense. Plaintiffs suggest that the “central-entity” and “external-entity” are not
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`“entities” or “parties” as described in the specification, but rather are computers. The ’432 patent
`
`is very clear that an “external-entity” is, among other things, “any party offering goods or
`
`services” and that a “central-entity” is, among other things, “any party that has a user’s personal
`
`and/or financial information.” ’432 patent, col. 2:13-26 (emphasis added). This requirement is
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`also inconsistent with the claims, which recite both a “central-entity” and a “computer associated
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`with the central entity” as well as both an “external-entity” and a “computer associated with the
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`external entity.” See, e.g., ’432 patent claim 1. The claim language would be superfluous and
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`nonsensical under Plaintiffs’ construction, which makes Plaintiffs’ construction presumptively
`
`incorrect. E.g., Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006).
`
`Plaintiffs’ constructions also fail because they do not give effect to the arguments and
`
`admissions they made in the prosecution history. First, Plaintiffs ignore that the portion of
`
`USAA’s construction referring to the use of separated computers comes right from the Plaintiffs
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`themselves. In the POPR, Plaintiffs argued that the “broadest reasonable interpretation” of these
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`terms includes the separated computers requirement plus the definitions in the ’432 patent relied
`
`on by USAA. POPR at p. 10-19. By definition, Plaintiffs are offering unreasonable constructions
`
`to the Court. Moreover, Plaintiffs ignore the representations made in the prosecution of the ’837
`
`patent (to which they allege to claim priority), wherein it is argued that (1) the “invention”
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`described in the specification is limited to the scenario where there is no preexisting relationship
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`between the user and the external-entity and (2) that the transmission of personal or confidential
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`information to an external-entity would “render the present invention inoperable and/or
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`pointless.” ’837 File History, Page 5 of 8/23/06 Office Action Response and Pages 2-5 of
`
`4/27/05 Office Action Response. Plaintiffs cannot walk away from these disclaimers to argue
`
`infringement. E.g., TomTom, Inc., 790 F.3d at 1325.
`
`USAA’s construction also makes clear that the Central-Entity and External-Entity are
`
`distinct entities in a transaction. There is no description in the ’432 patent specification that such
`
`entities can be the same.1 And that makes sense because the entire object of the “invention” –
`
`
`
` 1
`
` USAA acknowledges that there are claims that refer to this, but submits that such claims are
`indefinite, lack written description, inoperable, and are not what the applicant regarded as his
`“invention.”
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`consistent with the title of the patent – is to centralize users’ confidential and personal
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`information with the Central-Entity “instead of providing their personal and financial
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`information to the External-Entities.” E.g., ’432 patent at col. 2:50-63. This is also compelled by
`
`the file history. The “invention” described in the specification is limited to solving the problem
`
`of authentication when there is no preexisting relationship between the user and the external-
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`entity by leveraging an existing relationship between the user and a central-entity. ’837 Patent
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`File History, Page 5 of 8/23/06 Office Action Response. As the Plaintiffs explained, the “present
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`invention allows online businesses (‘ExternalEntity’) to directly authenticate their customers
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`over the Internet using trusted authenticators (‘Central-Entity’) without having prior relationships
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`with customers/users.” Id. at 3. If the external-entity and central-entity were the same entity, the
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`objective of the “invention” would make no sense. Similarly, the Plaintiffs explained that
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`transmission of personal or confidential information to an external-entity would “render the
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`present invention inoperable and/or pointless.” ’837 Patent File History, Pages 2-5 of 4/27/05
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`Office Action Response. If a Central-Entity and an External-Entity were the same, personal or
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`confidential information would be transmitted to an external-entity, “render[ing] the present
`
`invention inoperable and/or pointless.” Id. at 5.
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`d. wherein the dynamic code is valid for a predefined time and becomes invalid
`after being used
`
`Plaintiffs contend that this term should be understood according to its ordinary meaning,
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`and that USAA’s proposed construction is not within that ordinary meaning. However, the meet
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`and confer process did not reveal with sufficient clarity exactly what aspects of USAA’s
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`construction are not, in Plaintiffs’ view, consistent with the ordinary meaning.
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`USAA’s construction clarifies what this language means in the light of the intrinsic
`
`record. First, USAA’s construction clarifies that “valid for a predefined time” is referring to a
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`predefined amount of time. Without that clarification, the jury might be confused into thinking
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`that “dynamic codes” might be valid for use only at a particular time, e.g., 2:30 PM.
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`The second area of clarification gives effect to the specification and the Plaintiffs’
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`arguments in the Inter Partes review and the prosecution file history that a given dynamic code
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`can be used only once. For example in the POPR, the Plaintiffs argued that under the “broadest
`
`reasonable interpretation” “it is reasonable to construe that the dynamic code/SecureCode is for
`
`one-time use” and “[t]hus, no transaction should use the same dynamic code/SecureCode, and
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`whenever the user attempts to get access to a restricted web site, a new transaction restarts and a
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`new dynamic code/SecureCode is generated by the central-entity.” POPR at 23 (original
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`emphasis omitted; shown emphasis added). In the file history, is it explained that “each and
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`every” transaction gets a “new” dynamic code, and that “it is impossible for any two or more
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`people to have the same SecureCode.” ’432 file history, Page 17 of 8/10/10 Office Action
`
`Response; ’837 file history, Pages 7, 9 of 8/30/05 Office Action Response.
`
`Aside from aligning with the claim language of “becom[ing] invalid after being used,”
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`USAA’s construction is perfectly consistent with the specification of the ‘432 patent (and ‘837
`
`patent) which explains that the “Central-Entity may improve the level of security by invalidating
`
`the SecureCode after it’s [sic] use” and that the “Central-Entity will invalidate the SecureCode to
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`prevent future use.” ‘’432 patent, col. 5:66-6:13.
`
`e. another computer associated with the central-entity
`
`Plaintiffs contend that this term should be understood according to its ordinary meaning,
`
`and that USAA’s proposed construction is not within that ordinary meaning. USAA’s proposed
`
`construction centers on the word “another,” and it entirely unclear how Plaintiffs contend that
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`“another computer associated with the central-entity” can mean anything but “a second, logically
`
`distinct computer associated with the central entity,” which is wholly consistent with the claim
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`language. Indeed, the distinction made by USAA was also made by Plaintiffs in the Inter Partes
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`Review in arguing that “a computer” and “another computer” are “two separated elements.”
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`POPR at pp. 55-56 (emphasizing that “a computer” and “another computer” are “two separated
`
`elements”).
`
`f. (i) receiving electronically a request for a dynamic code for the user by a
`computer associated with a central entity AND (ii) generating a dynamic
`code for the user in response to a request during the electronic transaction /
`generating [by the central-entity during the electronic transaction] a
`dynamic code for the user / generate a dynamic code for the user
`
`Plaintiffs contend that this term should be understood according to its ordinary meaning,
`
`and that USAA’s proposed construction is not within that ordinary meaning. The primary area of
`
`dispute is that USAA’s construction makes clear that the request for a dynamic code is sent by a
`
`user to the central-entity. But Plaintiffs have already conceded in filings with the Patent Office
`
`in an Inter Partes Review of the patent-in-suit that this requirement is consistent with the
`
`“broadest reasonable interpretation” of the term “transaction,” which appears in every claim.
`
`Indeed, in the POPR, the Plaintiffs argue that one of the “important key features” of every
`
`“transaction” is that the “User requests SecureCode (dymanic code) from the Central-Entity
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`over the communication network.” POPR at 21-22 (first emphasis added). Having made that
`
`admission, Plaintiffs may not now be seen to broaden this term in an attempt to reclaim scope
`
`that that they have previously surrendered. E.g., TomTom, Inc. 790 F.3d at 1325 (Fed. Cir. 2015)
`
`(“where the patentee has unequivocally disavowed a certain meaning to obtain his patent, the
`
`doctrine of prosecution disclaimer attaches and narrows the ordinary meaning of the claim
`
`congruent with the scope of the surrender”); InTouch Techs., , 751 F.3d at 1341-42 (explaining
`
`that the reexamination history is part of the prosecution history); Grober, , 686 F.3d at 1341
`
`(applying doctrine of prosecution disclaimer to reexamination proceedings); Aylus Networks, Inc,
`
`2016 WL 270387 at *5 (holding that Patentee’s statements in a Preliminary Patent Owner
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`Response, like relied on here, “are akin to a prosecution disclaimer” under which the “patentee is
`
`held to what he declares during the prosecution of his patent”).
`
`g. digital identity
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`Plaintiffs propose a construction unmoored from the specification. USAA’s construction
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`– with the substitution of “dynamic code” for “SecureCode,” which terms Plaintiffs have
`
`admitted are interchangeable – comes directly from the specification of the patent-in-suit. ’432
`
`Patent col. 2:41-45.
`
`IV. CLAIM PHRASES THAT USAA CONTENDS ARE INDEFINITE
`
`Plaintiffs believe that the identification of indefinite phrases was not requested by the
`
`Rule 16(b) Scheduling Order [Dkt. No. 54] and is more properly addressed after the disputed
`
`claim terms identified in Appendix A have been construed. Thus, Plaintiffs do not address
`
`USAA’s indefiniteness contentions here, apart from noting that USAA’s indefiniteness
`
`contentions are directed either to claims that Plaintiffs are not asserting or to claim terms that
`
`Plaintiffs contend are not indefinite.
`
`USAA contends that these phrases are indefinite:
`
`Term/Phrase
`“communicates with said central-entity” / “communicates
`with said external-entity” / “external-entity authenticates” /
`“central-entity authenticates”
`
`“apparatus for authenticating a user during an electronic
`transaction with an external-entity”
`
`“apparatus as recited in claim 25, wherein said user
`communicates” / “apparatus of claim 25, wherein said
`external-entity authenticates the user upon receiving an
`affirmation authentication message from the central-entity”
`/ “apparatus of claim 25, wherein said central-entity
`invalidates the dynamic code” / “apparatus of claim 25,
`wherein said central-entity generates the dynamic code”
`
`“wherein said external-entity and said central-entity are the
`same entity” / “wherein said first central-entity computer
`and said second central-entity computer are the same”
`
`Claims
`16, 17, 22, 23, 34, 35, 40, 45
`(and dependent claims)
`
`25, 52 (and dependent claims)
`
`34, 35, 40-43, 45 (and
`dependent claims)
`
`11, 36, 46, 49, 53 (and
`dependent claims)
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`Term/Phrase
`
`“generating by the central-entity” / “authenticating by the
`central-entity / “receiving electronically by the central
`entity”
`
`“predetermined algorithm” / “algorithmically combined”
`
`
`Claims
`
`1, 48 (and dependent claims)
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`2, 9, 10, 28 (and dependent
`claims)
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`
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`V.
`
`EACH PROPOSED WITNESS AT THE CLAIM CONSTRUCTION
`HEARING AND A BRIEF DESCRIPTION OF THE WITNESS’S
`TESTIMONY
`
`A. Plaintiffs
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`Plaintiffs do not believe that live testimony is needed at the Markman hearing. Plaintiffs
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`contend that expert testimony is extrinsic evidence that should only be considered after intrinsic
`
`evidence, and that expert witness testimony in regard to claim construction is even less than
`
`reliable than objective extrinsic evidence such as technical dictionaries since expert witness
`
`testimony may be biased and self-serving.
`
`B. USAA
`
`USAA’s expert, Dr. Rubin, will give background testimony on the field to which the ’432
`
`patent relates, so as to assist the Court’s understanding of the ’432 patent.
`
`USAA’s expert, Dr. Rubin, will testify that “central-entity” and “external-entity” are not
`
`terms with established meaning in the field, and that USAA’s construction is the one consistent
`
`with the intrinsic record. Dr. Rubin will also testify that combining the central-entity and
`
`external-entity into a single “entity” would frustrate the purpose of the alleged invention, and is
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`in fact inconsistent with the alleged invention. Dr. Rubin will also testify that Plaintiffs’ position
`
`that an “entity” is a computer is inconsistent with the intrinsic record, including the specification,
`
`claims, and file history. Instead, Dr. Rubin will explain that an “entity” is a “party,” as described
`
`in the intrinsic record.
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`USAA’s expert, Dr. Rubin, will testify that the intrinsic evidence compels USAA’s
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`construction of the phrase “wherein the dynamic code is valid for a predefined time and becomes
`
`invalid after being used,” and that USAA’s construction is consistent with the security model
`
`contemplated by the ’432 patent. Dr. Rubin will also testify as to the effect on security a “code”
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`consistent with USAA’s construction would have, as well as related technical background.
`
`VI. MARKMAN BRIEFING
`
`Unless the Court orders otherwise, the parties will file simultaneous initial claim
`
`construction briefs of not more than 30 pages on May 27, 2016, and will each file responsive
`
`claim construction briefs of not more than 30 pages on June 9, 2016.
`
`Dated: May 9, 2016
`
`Respectfully submitted,
`
`MEI & MARK LLP
`
`/s/ Krystyna Colantoni
`Krystyna Colantoni (VA Bar # 76612)
`kcolantoni@meimark.com
`Irene H. Chen (VA Bar #84841)
`ichen@meimark.com
`Reece Nienstadt (Pro Hac Vice)
`rnienstadt@meimark.com
`Larry Sandell (Pro Hac Vice)
`lsandell@meimark.com
`Lei Mei (Pro Hac Vice)
`mei@meimark.com
`MEI & MARK LLP
`P.O. Box 65981
`Washington, DC 20035-5981
`Telephone:
`888-860-5678
`Facsimile:
`888-706-1173
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`Counsel for Plaintiffs Nader Asghari-Kamrani
`and Kamran Asghari-Kamrani
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`JOINT STATEMENT ON CLAIM CONSTRUCTION
`(CASE NO. 2:15-cv-478-RGD-LRL)
`- 12 -
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`12
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`Case 2:15-cv-00478-RGD-LRL Document 95 Filed 05/09/16 Page 13 of 26 PageID# 3102
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`Dated: May 9, 2016
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`By: /s/ Ahmed Davis
`Ahmed J. Davis (Va. Bar # 43982)
`adavis@fr.com
`FISH & RICHARDSON P.C.
`1425 K Street, N.W., Suite 1100
`Washington, DC 20005
`Phone: (202) 783-5070
`Fax: (202) 783-2331
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`David Francescani (Pro hac vice)
`francescani@fr.com
`Michael T. Zoppo (Pro hac vice)
`zoppo@fr.com
`FISH & RICHARDSON, P.C.
`601 Lexington Avenue, 52nd Floor
`New York, New York 10022
`Tel. (212) 765-5070
`Fax (212) 258-2291
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`Matthew C. Berntsen (Pro hac vice)
`berntsen@fr.com
`David Kuznick (Pro hac vice)
`kuznick@fr.com
`Grant Rice (Pro hac vice)
`rice@fr.com
`FISH & RICHARDSON, P.C.
`One Marina Park Drive
`Boston, MA 02210-1878
`Tel. 617-542-5070
`Fax (617) 542-8906
`
`Counsel for Defendant United Services
`Automobile Association
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`JOINT STATEMENT ON CLAIM CONSTRUCTION
`(CASE NO. 2:15-cv-478-RGD-LRL)
`- 13 -
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`13
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`Case 2:15-cv-00478-RGD-LRL Document 95 Filed 05/09/16 Page 14 of 26 PageID# 3103
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`CERTIFICATE OF SERVICE
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`I hereby certify that the foregoing is being electronically filed with the Clerk
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`of Court using the CM/ECF system on May 9, 2016, and will thereby be served on
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`all parties and counsel designated to receive such notices.
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`/s/ Krystyna Colantoni
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`Krystyna Colantoni (VA Bar # 76612)
`Email: kcolantoni@meimark.com
`Reece Nienstadt (Pro Hac Vice)
`Email: rnienstadt@meimark.com
`MEI & MARK LLP
`P.O. Box 65981
`Washington, DC 20035-5981
`Telephone: 888-860-5678
`Facsimile: 888-706-1173
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`14
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`8/10/10 Office Action
`’432 file history, Page 17 of
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`therein.
`intrinsic evidence cited
`code/SecureCode”), and
`same dynamic
`transaction should use the
`and explain that “no
`(Plaintiffs define the term
`IPR2015-01842 at pp. 23-24
`Owners Response filed in
`Plaintiffs’ Preliminary Patent
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`numerical value”).
`“code” is not “merely a
`Response (explaining that a
`11/12/10 Office Action
`’432 file history, Page 15 of
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`therein.
`intrinsic evidence cited
`(defining the term), and
`IPR2015-01842 at pp. 23-24
`Owners Response filed in
`Plaintiffs’ Preliminary Patent
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`
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`Figs. 2 and 4.
`5:44-46; col. 5:51-6:13;
`4:53-58; col. 5:10-20; col.
`2:35-40; col. 3:14-21; col.
`1:22-28; col. 2:13-18; col.
`’432 Patent, abstract; col.
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`Intrinsic Evidence
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`transaction.”
`been used for any other
`transaction and has not
`the central-entity for this
`which is generated by
`authorized user, and
`identify a user as an
`digital identity to
`and is used as part of a
`communication network,
`the user over a
`which is broadcasted to
`alphanumeric, and
`dependent,
`non-predictable, time
`code that is dynamic,
`secret code, PIN or other
`“(aka SecureCode) any
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`Markman briefs.
`discussed in Plaintiffs’
`evidence to be
`Intrinsic and extrinsic
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`code.”
`temporary digital
`nonpredictable and
`“A substantially
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`All
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`“dynamic code”
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`USAA’s Evidence
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`USAA’s Proposal
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`Plaintiffs’ Evidence
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`Plaintiffs’ Proposal
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`Claims
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`Term/Phrase
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`APPENDIX A – DISPUTED CLAIM TERMS/PHRASES
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`Case 2:15-cv-00478-RGD-LRL Document 95 Filed 05/09/16 Page 15 of 26 PageID# 3104
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`15
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`6:7-13; Figs. 3-5.
`4:35-43; col. 4:62-63; col.
`col. 3:7-40; col. 4:3-17; col.
`col. 2:27-45; col. 2:56-63;
`patent, abstract; col. 2:10-18;
`description. See also ’432
`Figures 1, 2 and associated
`(defining the term); 3:8-26;
`(defining the term); 2:52-3:7
`’432 patent, col. 2:13-26
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`Intrinsic Evidence
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`20.
`3/8/16 Hearing Tr. at 11:11-
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`Extrinsic Evidence
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`for authentication….”).
`capable of being used alone
`this way, the SecureCode is
`the same SecureCode. In
`two or more people to have
`that “it is impossible for any
`Response (Plaintiffs explain
`of 8/30/05 Office Action
`’837 file history, Pages 7, 9
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`transaction”).
`is “issued for each and every
`that a “new” “SecureCode”
`Response (Plaintiffs explain
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`prevent distribution of
`environment in order to
`information in a secure
`personal and financial
`entity centralizes users’
`the user. The central-
`code (SecureCode) for
`dependable dynamic
`predictable and time
`dynamic, non-
`Password and generates
`information, UserName,
`personal and/or financial
`any party that has user's
`“A “central-entity” is
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`- 2 -
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`Markman briefs.
`discussed in Plaintiffs’
`evidence to be
`Intrinsic and extrinsic
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`systems.”
`to one or more external
`authentication services
`which provides
`one computer server,
`system having at least
`“An authentication
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`All
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`“central-entity”
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`USAA’s Evidence
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`USAA’s Proposal
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`Plaintiffs’ Evidence
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`Plaintiffs’ Proposal
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`Claims
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`Term/Phrase
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`Case 2:15-cv-00478-RGD-LRL Document 95 Filed 05/09/16 Page 16 of 26 PageID# 3105
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`16
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`- 3 -
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`the construction of the same claim term in the child”).
`2013); Cordis Corp. v. Boston Scientific Corp., 658 F.3d 1347, 1356 n.5 (Fed. Cir. 2011) (“a disclaimer in the parent application carries forward into
`highly relevant to interpreting the claims of the ’432 patent. E.g., Uship Intellectual Properties, LLC v. U.S., 714 F.3d 1311, 1315-16 (Fed. Cir.
`priority to U.S. Patent No. 7,356,837, which shares the “exact same” specification as the ’432 patent. As such, the file history of the ’837 patent is
`2 USAA’s Argument/Position: Although USAA disagrees that any such priority claim is made, Plaintiffs contend that the ’432 patent claims
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`prosecution disclaimer to reexamination proceedings).
`reexamination history is part of the prosecution history); Grober v. Mako Prods., 686 F.3d 1335, 1341 (Fed. Cir. 2012) (applying doctrine of
`1297, 1301 (Fed. Cir. 2001); see also InTouch Techs., v. VGO Comms., Inc., 751 F.3d 1327, 1341-42 (Fed. Cir. 2014) (explaining that the
`be read consistently with the totality of the patent’s applicable prosecution history.” Biovail Corp. Intern. v. Andrx Pharmaceuticals, Inc., 239 F.3d
`the prosecution history, which the Court considers in the Markman process. Indeed, the Federal Circuit has instructed that “[c]laim language … must
`claims, along with argument concerning interpretation of the claim terms at issue here. Such submissions to the Patent Office are treated like part of
`submission opposing Inter Partes review. That submission included what Plaintiffs believe are the broadest reasonable interpretations of their
`1 USAA’s Argument/Position: Plaintiffs made representations concerning the scope of their claims to the Patent Trial and Appeal Board in their
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`that the alleged invention is
`Response (Plaintiffs arguing
`of 427/05 Office Action
`’837 File History, Pages 2-5
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`pointless”).
`inoperable and/or
`“render the present invention
`to the external-entity would
`or confidential information
`that transmission of personal
`Response (Plaintiffs arguing
`8/23/06 Office Action
`’837 File History2, Page 5 of
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`
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`therein.
`intrinsic evidence cited
`(defining the term), and
`IPR2015-01842 at pp. 10-19
`Owners Response1 filed in
`Plaintiffs’ Preliminary Patent
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`separated computers
`“extern