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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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`GOOGLE INC.,
`Petitioner,
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`v.
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`ALFONSO CIOFFI, MEGAN ELIZABETH ROZMAN,
`MELANIE ANN ROZMAN, AND MORGAN LEE ROZMAN,
`Patent Owners.
`____________
`
`Case CBM2017-00010
`Patent RE43,528
`____________
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`
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`PATENT OWNER BRIEF ON FEDERAL CIRCUIT DECISIONS
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`CBM2017-00010
`Patent RE43,528
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`Alfonso Cioffi, Megan Rozman, Melanie Rozman, and Morgan Rozman
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`(collectively, “Patent Owner”) hereby provide this brief in response to an invitation
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`to address the impact of Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed.
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`Cir. 2016) (“Unwired Planet “) and Secure Axcess, LLC v. PNC Bank National
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`Assoc., 848 F.3d 1370 (Fed. Cir. 2017) (“Secure Axcess“) on this proceeding.
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`Firstly, inasmuch as the Petitioner Google Inc. (“Petitioner”) bears the burden to
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`support the Petition for Covered Business Method Review of U.S. Patent No.
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`RE43,528 (“Petition”), the Patent Owner continues to believe that the Petitioner’s
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`conclusory support for the Petition has failed to meet the burden to support the
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`same. This is simply not a covered business method (“CBM”)-eligible patent and
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`the Petitioner continues to pursue the same, even in view of Unwired Planet and
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`Secure Axcess.
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`The Patent Owner addressed Unwired Planet in the Patent Owner
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`Preliminary Response. The Federal Circuit rejected a definition of CBM patents
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`that relies on activities that are “incidental to” or “complementary to” a financial
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`activity, and stressed that CBM patents must be “financial in nature.” Unwired
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`Planet, 841 F.3d at 1382 (holding that “CBM patents are limited to those with
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`claims that are directed to methods and apparatuses of particular types and with
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`particular uses ‘in the practice, administration, or management of a financial
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`product or service.’”).
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`Patent Owner Brief on Federal Circuit Decisions
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`Page 1
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`CBM2017-00010
`Patent RE43,528
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`The operative inquiry is not what the claims cover, but what the claims are
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`directed to. See id. (“[T]he claims of the ditch-digging method or apparatus are
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`not directed to ‘performing data processing or other operations’ or ‘used in the
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`practice, administration, or management of a financial product or service,’ as
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`required by the statute.” (emphasis added)).
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`In Secure Axcess, the Federal Circuit affirmed the holding of Unwired
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`Planet finding that the Patent Trial and Appeal Board (the “Board”) definition of
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`the CBM scope was contrary to the statute. In the underlying proceeding, the
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`Board had concluded that “[t]he method and apparatus claimed by the ’191 patent
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`perform operations used in the practice, administration, or management of a
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`financial product or service and are incidental to a financial activity.” Secure
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`Axcess, 848 F.3d at 1381. (emphasis added). This expansive definition of a CBM
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`patent, however, was found to be beyond the scope of the plain statutory language
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`and therefore rejected. See id.
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`Even more recently in Google Inc. v. Klaustech. (CBM2016-00096), the
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`Board followed the Federal Circuit’s new guidance in Unwired Planet to deny the
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`CBM review because the challenged claims were not “directed to the practice,
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`administration, or management of a financial product or service.” Google Inc., v.
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`Klaustech, CBM2016-00096, at 11 (Feb. 27, 2017) (“Klaustech”).
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`Patent Owner Brief on Federal Circuit Decisions
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`Page 2
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`CBM2017-00010
`Patent RE43,528
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`In this proceeding, none of the challenged claims are “directed to the
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`practice, administration, or management of a financial product or service.” The
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`Petition challenges Claims 1, 5, 8, 21-24, 30, 44, 64, and 67 of U.S. Patent No.
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`RE43,528 (“Challenged Claims”). The Challenged Claims of U.S. Patent No.
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`RE43,528 (“’528 Reissue”) are not financial in nature, but are claims of general
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`utility with no finance-related terminology or limitations. Generally, independent
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`Claims 1, 21, 44, and 64 recite, among other things, a multi-process browser
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`architecture such that data or a system file is protected from malware. Claims 1,
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`21, 44, and 64 recite a “first web browser process” and “second web browser
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`process.” The “first web browser process” (i) is executed or opened “in a first
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`logical process” that is “capable of accessing” or “configured to access” “data
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`contained in [a/the] first memory space,” as recited in Claims 1, 21, and 64, or (ii)
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`is “capable of accessing data contained in the first memory space,” as recited in
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`Claim 44. The “second web browser process” (i) is executed or opened “in a
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`second logical process” that is “capable of accessing” or “configured to access”
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`“data contained in the second memory space,” as recited in Claims 1, 21, and 64,
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`or (ii) is “capable of accessing data contained in the second memory space,” as
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`recited in Claim 44. The “data residing on the first memory space is protected
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`from corruption by a malware process . . . executing as part of the second web
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`browser process,” as recited in Claim 1, or “the at least one system file residing on
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`Patent Owner Brief on Federal Circuit Decisions
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`Page 3
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`CBM2017-00010
`Patent RE43,528
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`the first memory space is protected from corruption by a malware process . . .
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`executing” within or as part of “the second web browser process,” as recited in
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`Claims 21, 44, and 64.” See also Ex. 2001 (Dunsmore Decl.) at ¶¶ 54-55. The
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`remaining Challenged Claims depending from Claims 1, 21, 44, and 64 generally
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`recite further details of the multi-process browser architecture.
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`Nothing in the Challenged Claims is financial in nature. Nothing in these
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`claims explicitly or inherently requires anything that is financial. Nothing in these
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`claims contemplates an exchange or movement of money. The Petitioner argues
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`that the claims cover and imply using a secure web browser in the specification’s
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`internet banking embodiment, which is indisputably a financial activity, and that
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`all of the Challenged Claims are tied to a specific financial activity described in the
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`’528 Reissue. The Petitioner is referring to the internet banking embodiment for
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`the specific financial activity. The Patent Owner concedes that the Challenged
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`Claims “cover” the internet banking embodiment, but this is wholly irrelevant. For
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`the reasons as set forth in the Preliminary Response, the Challenged Claims are not
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`directed to, and hence, are not “tied to” and do not “imply”, the internet banking
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`embodiment. As the Federal Circuit has indicated in Unwired Planet, such claims
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`that could “cover” but are not “directed to” a banking application would not be
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`sufficient to convey CBM eligibility.
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`Patent Owner Brief on Federal Circuit Decisions
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`Page 4
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`CBM2017-00010
`Patent RE43,528
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`In sum, the Challenged Claims have general utility with no relation to
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`financial services; the Challenged Claims are common in business environments
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`across sectors with no particular relation to financial services. The’528 Reissue is
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`simply not a CBM-eligible patent as confirmed by Unwired Planet, Secure Axcess,
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`and Klaustech.
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`Dated: April 7, 2017
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`Respectfully submitted,
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`/Glenn W. Boisbrun/
`Glenn W. Boisbrun
`Reg. No. 39,615
`gboisbrun@bh-ip.com
`Boisbrun Hofman, PLLC
`12900 Preston Rd.
`Suite 204
`Dallas, TX 75230
`Telephone: 972-385-9755
`Facsimile: 855-475-2987
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`Lead Counsel for Patent Owner
`Alfonso Cioffi et al.
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`
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`Patent Owner Brief on Federal Circuit Decisions
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`Page 5
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`Certificate of Service
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on April 7,
`2017 a complete copy of the foregoing was served on counsel of record for the
`Petitioner by filing this document through PTAB E2E and by sending this
`document via electronic mail to the following addresses:
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`
`James L. Day
`Reg. No. 72,681
`jday@fbm.com
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`Daniel Callaway
`Reg. No. 74,267
`dcallaway@fbm.com
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`Farella Braun + Martel LLP
`235 Montgomery Street, 17th Floor
`San Francisco, CA 94104
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`calendar@fbm.com
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`Dated: April 7, 2017
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`Respectfully submitted,
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`
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`
`
` /Liz Schumacher/
`Liz Schumacher
`Boisbrun Hofman, PLLC
`12900 Preston Rd.
`Suite 204
`Dallas, TX 75230
`Telephone: 972-385-9755
`Facsimile: 855-475-2987
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`
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