Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 9
` Date Entered: May 2, 2017
`
`
`
`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
`____________
`
`
`
`
`Before JAMESON LEE, BRIAN J. McNAMARA, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`571-272-7822
`
`
`
` Paper 9
` Date Entered: May 2, 2017
`
`
`
`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
`____________
`
`
`
`
`Before JAMESON LEE, BRIAN J. McNAMARA, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`
`CBM2017-00015
`Patent RE43,528
`
`
`
`
`BACKGROUND
`
`Pursuant to 35 U.S. C. § 321 and section 18 of the America Invents
`Act (AIA), Google, Inc. (Petitioner) filed a Petition, Paper 1 (“Pet.”),
`requesting that the Patent Trial and Appeal Board initiate a covered business
`method patent review of claims 1, 5, 8, 21–24, 30, 44, 64, and 67
`(the “challenged claims”) of U.S. Patent RE43,528 (the ’528 Patent).
`Petitioner contends that pursuant to 37 CFR §§ 42.301 and 42.304(a) the
`’528 Patent meets the definition of a covered business method patent and
`does not qualify as a technological invention. Pet. 5–16. Petitioner also
`contends that the challenged claims are unpatentable over the prior art. Id. at
`29–61.
`Alfonso Cioffi, Megan Elizabeth Rozman, Melanie Ann Rozman, and
`Morgan Lee Rozman (collectively, “Patent Owner”) filed a Patent Owner
`Preliminary Response contesting Petitioner’s assertion that the ’528 Patent is
`a CBM patent and the grounds on which Petitioner challenges the
`patentability of the claims. Paper 5 (“Prelim. Resp.”).
`The standard for instituting a covered business method patent review
`is the same as that for a post-grant review. (§ 18(a)(1) of the AIA). For the
`reasons discussed below, we are not persuaded that Petitioner has
`demonstrated that the ’528 Patent is a CBM patent. Therefore, we do not
`institute a covered business method patent review.
`
`PENDING LITIGATION
`A person may not file a petition under the Transitional Program for
`Covered Business Method Patents unless the person or the person’s real
`party in interest or privy has been sued for infringement or has been charged
`
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`Patent RE43,528
`
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`with infringement under that patent. See § 18(a)(1)(B) of the Leahy-Smith
`America Invents Act, Pub. L. 112-29, 125 Stat. 284, 329 (2011) (“AIA”).
`Petitioner represents that it has been sued for infringing the ’528 Patent in
`Cioffi, et al. v. Google Inc., 2:13-cv-00103 (E.D. Tex.). Pet. ix.
`
`THE ’528 PATENT (EXHIBIT 1001)
`The ’528 Patent is a reissue patent of U.S. Patent No. 7,484,247. Ex.
`1001, 1:14–15. As its title indicates, the ’528 Patent discloses a system and
`method for protecting a computer from malicious software. Figure 1
`illustrates a computer system with first and second processors 120 and 140,
`respectively. As Figure 1 of the ’528 Patent shows, both processors 120 and
`140 have a direct communication link with second memory 130, but only
`first processor 120 has a direct communication link with first memory 110.
`Second processor 140 can access memory 110, as in a multicore system,
`using processor 120 only with strict user permission through real time
`interaction or via stored configurations or commands. Id. at 10:37–44.
`Figure 1 shows network interface 190, such as a router or gateway,
`communicating with second processor 140 and the network. Id. at 10:13–
`18. Decryption keys can be passed between first processor 120 and network
`interface device 190 via communication link 191. Id. at 17:31–33. Figure 1
`also shows that user interface 150 provides input to first processor 120 and
`communicates with video processor 170 via link 151. Video processor 170
`communicates with first processor 120 via link 171 and with second
`processor 140 to provide information to video display 180 and is adapted to
`combine video data from the first and second processors and transmit it to
`display terminal 180 for display in a windowed format. Id. at 8:31–35.
`
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`This architecture is designed to protect memory 110 from malware
`initiated intrusions and from initiating unwanted processes on first processor
`120 by using second processor 140 to isolate first processor 120 and
`memory 110 from network 195. Ex. 1001, 8:35–39, 10:20–37. The flow
`diagram in Figure 3 illustrates a basic process in which a user selects data
`files to download via a browser (step 310) and second processor P2
`downloads and writes the data files to second memory M2 (step 320). When
`first processor P1 is directed to move the data files from memory M2 to first
`memory M1 (step 330), processor P2 scans for malware in the downloaded
`data file (step 340). Depending on whether or not malware is detected (step
`350), the data file is copied to memory M1 (step 360) or quarantined on
`memory M2 (step 370) and deleted, cleaned or otherwise quarantined on M2
`(step 380). Variations of this process are shown in Figures 4–6 and 10.
`Figures 7–9 illustrate various processor configurations. For example, Patent
`Owner notes that Figure 9 shows processor 960 with multiple cores, i.e. first
`processor core 920 and second processor core 940 and separate isolated
`memory areas 910 and 930 within a single memory space. Prelim. Resp. 6–
`7. Processor core 920 can access memory areas 910 and 930 and second
`processor 940 can access memory area 930 and may be configured to be
`incapable of initiating access to memory area 910. Id. Functions carried out
`by processors 920 and 940 may be separate logical processes operating on
`the same processor, but functions carried out by second processor 940 may
`be configured as unable to access automatically first memory area 910 or
`second memory area 910 or another logical process performing functions of
`first processor 920. Id. at 7–8 (citing Ex. 1001 16:10–12, 22–31).
`
`
`
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`ILLUSTRATIVE CLAIM
`Claim 1 is illustrative and is reproduced below as it appears in the
`’528 Patent, with matter enclosed in heavy brackets [ ] appearing in original
`U.S. Patent No. 7,484,247, but forming no part of the reissue ’528 Patent
`and matter in italics indicting additions made by reissue.
`1. A method of operating a computer system capable of
`exchanging data across a network of one or more computers and
`having at least a first and second electronic data processor
`capable of executing instructions using a common operating
`system, comprising [the steps of]:
`executing [instructions] a first web browser process, capable
`of accessing data of a website via the network, in a first
`logical process within the common operating system using
`the first electronic data processor, wherein the first logical
`process is capable of accessing data contained in a first
`memory space [and a second memory space];
`executing [instructions] a second web browser process in a
`second logical process within the common operating
`system using the second electronic data processor,
`wherein the second logical process is capable of accessing
`data contained in the second memory space [, the second
`logical process being further capable of exchanging data
`across a network of one or more computers];and
`displaying[, in a windowed format on a display terminal,] data
`from the first logical process and the second logical
`process, wherein a video processor is adapted to combine
`data from the first and second logical processes and
`transmit the combined data to [the] a display [terminal];
`wherein the computer system is configured such that the
`second electronic data processor is operating in a protected
`mode and data residing on the first memory space is
`protected from corruption by a malware process
`downloaded from the network and executing as part of the
`second [logical] web browser process.
`
`
`
`
`
`
`
`5
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`CBM2017-00015
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`
`
`Designation
`
`Exhibit No.
`
`Ioannidis-2002
`
`Ex. 1025
`
`
`ART CITED IN PETITIONER’S CHALLENGES
`Petitioner cites the following references in its challenges to
`patentability:
`Reference
`S. Ioannidis, S.
`Bellovin, and J. Smith,
`“Sub-Operating
`Systems: A
`New Approach to
`Application Security,”
`September 2002
`S. Ioannidis and S.
`Bellovin, “Building a
`Secure Web Browser,”
`June 2001
`M. Lucas, “Absolute
`OpenBSD: UNIX for
`the Practical Paranoid,”
`No Starch Press, 2003
`
`G. Lehey, “The
`Complete FreeBSD:
`Documentation from
`the Source,” O’Reilly
`Community Press,
`Fourth Ed., May 2003
`(“Complete FreeBSD”)
`
`Ioannidis-2005
`
`Ex. 1026
`
`Absolute Open BSD
`
`Ex. 1027
`
`Complete Free BSD
`
`Ex. 1028
`
`
`
`
`
`
`
`
`
`6
`
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`CBM2017-00015
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`
`21–24, 30, 44, 64, and
`67
`
`35 U.S.C. § 103
`
`
`CHALLENGES ASSERTED IN PETITION
`Claims
`Statutory Basis
`Challenge
`Obvious over
`Ioannidis-2002 and
`Ioannidis, individually
`or together, or in light
`of Absolute Open BSD
`and the knowledge of a
`person of ordinary skill
`in the art
`Obvious over
`Ioannidis-2002 and
`Ioannidis, individually
`or together, or in light
`of Absolute Open BSD
`and Complete Free
`BSD and the
`knowledge of a person
`of ordinary skill in the
`art
`
`35 U.S.C. § 103
`
`1, 5, 8
`
`
`
`CLAIM CONSTRUCTION
`We interpret the claims of an unexpired patent using the broadest
`reasonable construction on light of the specification if the patent in which
`they appear. See 37 C.F.R. § 42.100(b). Cuozzo Speed Techs. LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016). In applying a broadest reasonable
`construction, claim terms generally are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must
`be set forth in the specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
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`Petitioner and Patent Owner propose similar claim constructions.
`Patent Owner proposes that following constructions:
`“web browser process” – the parties agree that a “web browser
`process” means a “process that can access data on websites (e.g., direct or
`indirect)” Prelim. Resp. 15, see Pet. 27.
`“first memory space” – memory space distinct from a second memory
`space. The parties agree on this construction. Id..
`“second memory space” – memory space distinct from a first memory
`space. The parties agree on this construction. Id.
`“the second electronic data processor is operating in a protected
`mode” – the second electronic data processor is configured such that it is
`incapable of automatically accessing the first memory space.” Prelim. Resp.
`15; see Pet. 27–28
`Patent Owner states that these are the broadest reasonable
`constructions of the foregoing terms and they are the same as the
`constructions applied by the district court in the co-pending litigation. Id. at
`14–15.
`We agree that that these constructions are consistent with the
`Specification of the ’528 Patent and, in that context, are the broadest
`reasonable interpretations of the terms. Therefore, to the extent that claim
`constructions are relevant to this Decision, we adopt Patent Owner’s
`proposed constructions.
`We also address the following claim terms and claim construction
`issues:
`“system file” – Citing the claim construction order entered by the
`district court in co-pending litigation, Petitioner proposes we construe this
`
`
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`term in claims 21, 44, and 64 to be synonymous with a “critical file” or
`“critical system file,” which refers to files required for the proper operation
`of the computer’s systems. Pet. 27–28 (citing Ex. 1012). Patent Owner does
`not propose a specific construction. We agree that Petitioner’s proposed
`construction is broadest reasonable interpretation consistent with the
`specification of the ’528 Patent and we adopt it in this proceeding to the
`extent that claim constructions are relevant to this Decision.
`Patent Owner and Petitioner also contend that the preamble of claim
`64 is limiting. The preamble of claim 64 recites specific features of the
`claimed computer program product, e.g., that the stored code is capable of
`executing instructions using a common operating system having at least one
`electronic data processor coupled to other elements in a specific way. Thus,
`we agree that the preamble of claim 64 is limiting.
`Petitioner argues that the preamble of claim 44 is also limiting
`because it provides antecedent basis for further claim recitations. Pet. 28.
`The preamble of method claim 44 recites structure similar to that discussed
`above with respect to claim 64 and we agree that the preamble of claim 44 is
`limiting for similar reasons.
`
`
`THE ’528 PATENT IS NOT DIRECTED TO
`A 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.” 37 C.F.R. § 42.301(a). None of the claims of the ’528 Patent
`explicitly recites a financial product or service. The Petition argues that the
`phrase “financial product or service” in the statute is to be interpreted
`
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`broadly to encompass patents claiming activities that are financial in nature,
`incidental to a financial activity, or complementary to a financial activity.
`Pet. 3. According to the Petition, the claims of the ’528 Patent are broad
`enough to cover a “financial product or service” at least because they “imply
`using a secure web browser in the specification’s Internet banking
`embodiment, which is indisputably a financial activity.” Pet. 4.
`The Petition was filed on November 4, 2016. Seventeen days later, on
`November 21, 2016, the Court of Appeals for the Federal Circuit decided
`Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016). The
`Patent Owner Preliminary Response cites Unwired Planet in support of its
`position that “a patent that ‘covers’ some method and corresponding
`apparatus does not become a CBM patent because its practice could involve
`financial activity.” Prelim. Resp. 21–22. According to Patent Owner, the
`claims of the ’528 Patent are not financial in nature, but are claims of
`general utility reciting, among other things, a multi-process browser
`architecture such that data and system files are protected from malware. Id.
`at 18–19.
`Patent Owner filed its Preliminary Response on February 16, 2017.
`Five days later, on February 21, 2017, the Federal Circuit again addressed
`the scope of a covered method patent in Secure Axcess, LLC v. PNC Bank
`National Assoc., 848 F.3d 1370 (Fed. Cir. 2017). On March 24, 2017, we
`invited the parties to submit briefs directed to the implications of these two
`decisions on the current proceeding. Paper 6. Each party submitted its brief
`on April 7, 2017. Paper 7 (“PO Suppl. Brief”); Paper 8 (“Pet. Suppl. Brief”).
`In their supplemental briefing Petitioner and Patent Owner agree that,
`in contrast to the arguments advanced in the Petition, Unwired Planet
`
`
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`CBM2017-00015
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`
`
`established that the statutory definition of covered business method patent
`excludes patents claiming activities that are only “incidental to” or
`“complementary to” financial activity. Pet. Suppl. Brief 1–2; PO Suppl.
`Brief 1. In Secure Axcess, the court stated “Necessarily, the statutory
`definition of a CBM patent requires that a patent have a claim that contains,
`however framed, a financial activity element.” Secure Axcess, 848 F.3d at
`1381.
`Citing Secure Access¸ id., Petitioner emphasizes that the phrasing of a
`qualifying claim does not require particular talismanic words. Pet. Suppl.
`Brief 2. Indeed, the court noted that when properly construed in light of the
`written description, the claim need only require one of a wide range of
`finance-related activities. Secure Axcess, 848 F.3d at 1381. In this case,
`Petitioner argues that the claims are directed to a financial activity based on
`unrebutted evidence that the claims cover internet banking discussed in the
`Specification. Pet. Suppl. Brief 3. Petitioner also argues that, at a minimum,
`a question of material fact exists on this issue that should be resolved in the
`preliminary stage in Petitioner’s favor. Id.
`The claims of the ’528 Patent recite features that protect a computer
`from malware. Petitioner states that 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 in a second process and then transferring the
`encrypted data along a network interface device. Id. at 3–4. Petitioner
`emphasizes that the specification identifies only one use of the encrypted
`data, i.e., internet banking. Id. at 4. According to Petitioner, 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
`
`
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`11
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`banking host computer. Id. Emphasizing that the statute includes in the
`definition of a covered business method patent a method that is “used in” a
`financial activity, Patent Owner contends that at least claim 8 qualifies the
`’528 Patent as a covered business method patent. Id.
` Patent Owner concedes that the claims “cover” an internet banking
`application, but emphasizes that what the claims cover is not the operative
`inquiry. PO Suppl. Brief 2, 4. Patent Owner argues that the claims must be
`directed to a financial activity. Id. at 2. According to Patent Owner, nothing
`in the challenged claims is financial in nature, nothing in the challenged
`claims is explicitly or inherently financial, and nothing in the challenged
`claims contemplates an exchange of money. Id. at 4.
`Almost the entire text of the ’529 Patent Specification describes a
`computer architecture that protects against malware intrusions. A few lines
`of the Specification cited by Petitioner mention that malware is capable of
`stealing passwords, bank account, and social security information (Ex. 1001,
`16:38–41, 17:40–41), that sensitive user interface data can be encrypted (id.
`at 17:3), and that such encryption is useful in an internet banking host
`computer (id. at 17:31). These incidental statements do not change the
`thrust of the ’528 Patent disclosure, which discusses almost exclusively
`various implementations of the malware protection architecture. The claims
`of the ’528 Patent are not “directed to” a financial activity,” as the Federal
`Circuit has applied that term in Versata Development Group, Inc. v. SAP
`America, Inc., 793 F.3d 1306 (Fed. Cir. 2015); Blue Calypso LLC v.
`Groupon Inc., 815 F.3d 1331 (Fed. Cir. 2016); and SightSound Techs., LLC
`v. Apple, Inc., 809 F.3d 1307 (Fed. Cir. 2015). See Secure Axcess, 848 F.3d
`at 1381. In Versata, the court agreed with the Board’s determination that the
`
`
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`
`
`subject patent claimed methods and products for determining a price, and are
`considered financial products and services under the statute. Versata, 793
`F.3d at 1325–1327. In Blue Calypso the court found the claims to have an
`express financial component in the form of a subsidy or financial
`inducement that encourages consumers to participate in the distribution of
`advertisements. Blue Calypso, 815 F.3d at 1314. In SightSound the court
`found claims requiring the selling of desired video or digital audio signals
`for a fee through telecommunications lines to be financial in nature.
`SightSound, 809 F.3d at 1311, 1315–16. There is no discussion in the ’528
`Patent Specification of any method of sale, commerce, advertising or
`conducting financial transactions that is implemented by the subject malware
`protection architecture.
`We perceive no “issue of material fact” that should be resolved in
`favor of the Petitioner at the institution stage. Pet. Supp. Brief 3. Although
`the Petition discusses the construction of several claim terms, none of the
`proposed interpretations includes any reference to features that are related to
`internet banking or any other feature that is financial in nature. See Pet. 27
`(e.g., proposing that “web browser process” be construed as a “process that
`can access data on websites” in which “this ‘access’ to website data can be
`direct or indirect”).
`In short, none of the claims of the ’528 Patent is “directed to” a
`financial activity on its face, and we do not read any such financial activity
`into them based on the Specification’s assertion that malware protection
`could be useful in internet banking. Thus, we are not persuaded that the ’528
`Patent qualifies for covered business method patent review.
`
`
`
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`
`
`SUMMARY
`For the reasons discussed above, we are not persuaded that the ’582
`Patent qualifies for covered business method patent review.
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that a covered business method patent review of the ’528
`Patent is not instituted.
`
`
`
`
`
`
`PETITIONER:
`James Day
`Daniel Callaway
`jday@fbm.com
`dcallaway@fbm.com
`
`PATENT OWNER:
`Glenn Boisbrun
`David Hofman
`gboisbrun@bh-ip.com
`dhofman@bh-ip.com
`
`
`
`
`14
`
`
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