UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________
`
`GOOGLE INC.,
`Petitioner
`
`v.
`
`ALFONSO CIOFFI, MEGAN ELIZABETH ROZMAN,
`MELANIE ANN ROZMAN, AND MORGAN LEE ROZMAN,
`Patent Owners.
`
`___________
`
`Case CBM2017-00015
`Patent RE43,528
`___________
`
`PETITIONER’S SUPPLEMENTAL BRIEF
`REGARDING UNWIRED PLANET AND SECURE AXCESS
`
`
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________
`
`GOOGLE INC.,
`Petitioner
`
`v.
`
`ALFONSO CIOFFI, MEGAN ELIZABETH ROZMAN,
`MELANIE ANN ROZMAN, AND MORGAN LEE ROZMAN,
`Patent Owners.
`
`___________
`
`Case CBM2017-00015
`Patent RE43,528
`___________
`
`PETITIONER’S SUPPLEMENTAL BRIEF
`REGARDING UNWIRED PLANET AND SECURE AXCESS
`
`
`
`Case CBM2017-00015, Patent RE43,528
`
`Petitioner Google Inc. provides the following supplemental briefing in
`
`response to the Board’s March 24, 2017 order authorizing each party to file a brief
`
`addressing the impact of Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed.
`
`Cir. 2016) and Secure Axcess, LLC v. PNC Bank National Assoc., 848 F.3d 1370
`
`(Fed. Cir. 2017).
`
`I.
`
`THE ’528 REISSUE QUALIFIES AS A CBM PATENT UNDER
`UNWIRED PLANET AND SECURE AXCESS
`
`The AIA defines a CBM patent as one claiming a method or apparatus “for
`
`performing data processing or other operations used in the practice, administration,
`
`or management of a financial product or service ….” AIA § 18(d)(1). In Unwired
`
`Planet, the Federal Circuit rejected any expansion of the statutory definition to
`
`include those claiming activities that are only “incidental to” or “complementary
`
`to” financial activity. 841 F.3d at 1382. The decision did not suggest, however,
`
`that a CBM patent must include claim terms that are explicitly and solely financial
`
`in nature. Rather, Unwired Planet stands for the straightforward proposition that
`
`the claims themselves (rather than the written description alone) must meet the
`
`unexpanded statutory definition of a CBM patent. Id. at 1381 (“The authoritative
`
`statement of the Board’s authority to conduct a CBM review is the text of the
`
`statute.”).
`
`The Secure Axcess court “dr[e]w the same conclusion” as the Unwired
`
`Planet court – that the statutory definition excludes patents claiming activities that
`
`1
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`
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`Case CBM2017-00015, Patent RE43,528
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`are only “incidental to” or “complementary to” financial activity – and went
`
`further by concluding that the particular patent at issue there was “outside the
`
`definition of a CBM patent that Congress provided by statute.” 848 F.3d at 1373.
`
`Again, the court confirmed that the statutory definition does not require that claims
`
`contain specific, explicitly financial terms. Id. at 1381 (“To be clear: the phrasing
`
`of a qualifying claim does not require particular talismanic words.”).
`
`What Secure Axcess and Unwired Planet collectively confirm then is that the
`
`statutory definition controls CBM-eligibility and that it does not require recitation
`
`of explicitly financial terms in the claims. As explained in the Petition, “the claims
`
`contain specific language, identified by the Patent Owner’s own expert, that
`
`directly ties the challenged claims to and implies the use of an embodiment for
`
`conducting a financial activity” (i.e., “internet banking”). Pet. at 9. The ’528
`
`Reissue claims recite a method “for performing data processing or other operations
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`used in the practice, administration, or management of a financial product or
`
`service,” and the patent therefore falls directly within the statutory definition. The
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`Board need not apply the “incidental to” or “complementary to” standard to
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`conclude that the ’528 Reissue claims satisfy the requirements of AIA § 18(d)(1).
`
`The Patent Owners may assert a narrow reading of the Federal Circuit
`
`decisions to suggest that the claims must include explicitly financial terms and that
`
`they must exclude any possibility of covering non-financial activity. Neither the
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`2
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`Case CBM2017-00015, Patent RE43,528
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`Federal Circuit cases nor the statute impose such a narrow definition.
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`Furthermore, applying such a narrow definition to preclude institution of this
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`review would end the proceeding prematurely. In the preliminary response, Patent
`
`Owners accept that the “operative inquiry” involves determining “what the claims
`
`are directed to” (Prelim. Resp. at 22) but dispute the evidence showing that the
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`challenged claims are “directed to” internet banking (id. at 18-24). At most,
`
`however, Patent Owners raise an issue of material fact. Petitioner showed that the
`
`claims are directed to a financial activity based on direct evidence including
`
`admissions by the Patent Owners and their expert witness. Pet. at 6-9; Ex. 1011;
`
`Ex. 1014. This evidence is unrebutted by any of Patent Owners’ evidence, though
`
`they submitted a declaration in response to the petition by the very same expert
`
`(addressing the technical prong of CBM-eligibility). In any event, any factual
`
`dispute between the parties on this underlying issue should be resolved in favor of
`
`the Petitioner at the institution stage. 37 C.F.R. § 42.108(c). Moreover, by
`
`instituting a CBM review, the Board will gain the benefit of further discussion of
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`CBM-eligibility by other PTAB panels and the Federal Circuit.
`
`II.
`
`THE ’528 REISSUE CLAIMS A METHOD “USED IN” INTERNET
`BANKING
`
`As explained in the petition, claim 8 recites a method for exchanging data on
`
`a network that is limited to “encrypting data” in a first process, “transferring the
`
`encrypted data” to a second process, and then “transferring the encrypted data”
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`3
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`Case CBM2017-00015, Patent RE43,528
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`along to a “network interface device.” Pet. at 9; ’528 Reissue at 18:56-62
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`(Ex. 1001). The specification identifies only one use for the claimed method of
`
`exchanging encrypted data: internet banking. ’528 Patent at 16:66-17:48
`
`(Ex. 1001). Claim 8 is not directed to data “encryption” in general, but to a
`
`specific method of operating a computer that is used to exchange sensitive
`
`financial data with an “internet banking host computer.” Id. at 17:27-31. Claim 8
`
`does not recite a claim that is merely “incidental to” or “complementary to” a
`
`financial activity. Instead, claim 8 recites a method “used in” that financial
`
`activity (i.e., “internet banking”) exactly as required by the statutory definition of a
`
`CBM patent. Therefore, both Unwired Planet and Secure Axcess confirm that the
`
`’528 Patent is eligible for CBM review.
`
`Respectfully submitted,
`
` /s/ James L. Day
`James L. Day
`Registration No. 72,681
`Lead Counsel for Petitioner
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that a copy of the foregoing PETITIONER’S
`SUPPLEMENTAL BRIEF REGARDING UNWIRED PLANET AND SECURE
`AXCESS was served by filing it through the Patent Trial and Appeal Board End to
`End (PTAB E2E) system, as well as by causing the document to be electronically
`
`mailed, to the following:
`
`Glenn Boisbrun (gboisbrun@bh-ip.com)
`David R. Hofman (dhofman@bh-ip.com)
`Adan C. Davenport (adavenport@bh-ip.com)
`BOISBURN HOFMAN, PLLC
`12900 Preston Road, Dallas, TX 75230
`
`Diiinne Marangio
`litigationParalegal
`Farella Braun + Martel LLP
`
`April 7, 2017
`235 Montgomery Street
`San Francisco, CA
`
`
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