throbber
Trials@uspto.gov
`571-272-7822
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` Paper 9
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`Entered: August 13, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FIDELITY NATIONAL INFORMATION SERVICES, INC.,
`Petitioner,
`
`v.
`
`DATATREASURY CORP.,
`Patent Owner.
`
`
`Case IPR2014-00489
`Patent 5,910,988
`
`
`
`Before MICHAEL P. TIERNEY, WILLIAM V. SAINDON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

`

`IPR2014-00489
`Patent 5,910,988
`
`
`I.
`INTRODUCTION
`Fidelity National Information Services, Inc. (“Petitioner”) filed a
`Petition requesting inter partes review of claims 22-25, 36-50, and 66-123
`(“the challenged claims”) of U.S. Patent No. 5,910,988 (Ex. 1001, “the ’988
`patent”). Paper 2 (“Pet.”). DataTreasury Corp. (“Patent Owner”) filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”). We have jurisdiction
`under 35 U.S.C. § 314.
`Upon consideration of the Petition and Preliminary Response, we
`determine that the information presented by Petitioner has not established
`that there is a reasonable likelihood that Petitioner would prevail in showing
`unpatentability of the challenged claims of the ’988 patent. Accordingly, the
`Petition is denied.
`
`A. Related Proceedings
`Petitioner and Patent Owner indicate that the ’988 patent is involved
`in three co-pending district court cases in the United States District Court for
`the Eastern District of Texas: DataTreasury Corp. v. Fiserv, Inc., 2:13-cv-
`00431 (E.D. Tex. filed May 28, 2013); DataTreasury Corp. v. Jack Henry &
`Associates, Inc. et al., 2:31-cv-00433 (E.D. Tex. filed May 28, 2013); and
`DataTreasury Corp. v. Fidelity National Information Services, Inc. et al.,
`2:13-cv-00432 (E.D. Tex. filed May 28, 2013). Pet. 3-5; Paper 4, 2-3.
`Petitioner and Patent Owner also identify several closed district court
`proceedings involving the ’988 patent. Pet. 3-5; Paper 4, 2-4.
`Petitioner and Patent Owner also identify additional petitions for inter
`partes review and for covered business method review of the ’988 patent:
`CBM2014-00021, CBM2014-00057, CBM2014-00087, and IPR2014-
`00491. Pet. 3; Paper 4, 2; Paper 5, 1. Petitioner and Patent Owner also
`
`2
`
`

`

`IPR2014-00489
`Patent 5,910,988
`
`identify petitions for inter partes review and for covered business method
`review of Patent Owner’s related U.S. Patent No. 6,032,137:
`CBM2014-00020, CBM2014-00056, CBM2014-00088, and IPR2014-
`00490. Id. Petitioner and Patent Owner also identify an ex parte
`reexamination of the ’988 patent (Control No. 90/012,537) (pending). Pet.
`3; Paper 4, 2.
`
`B. The ’988 patent
`The ’988 patent is directed to a system for remote data acquisition and
`centralized processing and storage of the acquired data. Ex. 1001, Abstract.
`An object of the invention is to provide an automated system to manage and
`store captured electronic and paper transactions from various activities
`including banking and consumer applications. Id. at 3:30–35. Generally,
`the ’988 patent describes scanning documents using a scanner attached to a
`general purpose network computer that is connected via a carrier cloud to a
`server that inserts images and data received into a database. Id. at Figs. 1–2,
`3:30–51, 4:60–67, 5:40–45, 16:38–45. Additionally, the general purpose
`network computer encrypts the images and data to provide a system with
`maximal security. Id. at 3:30–35, 7:31–35, 8:3–5.
`Figure 1 of the ’988 patent, provided below, depicts a preferred
`embodiment of the system having three major operational elements:
`
`3
`
`

`

`9
`
`IPR22014-0048
`
`
`Patennt 5,910,9888
`
`
`
`
`
`
`’988 patennt describes the tieredd arrangemment depictted in Figuure 1 as
`
`
`
`
`
`
`
`The
`
`
`folloows:
`
`
`shows thee architectuure of the
`FIG. 1
`
`
`DataTreaasury™ Syystem
`
`
`
`
`
`
`100. Thhe DataTreeasury™ SSystem 1000 has thrree operattional
`
`
`
`elementss: the DataaTreasury™™ System
`
`
`Access TTerminal (DDAT)
`
`
`
`
`
`
`200 (thee remote ddata accesss subsysteem), the DDataTreasuury™
`data
`System
`
`
`
`
`Access CCollector (DAC) 4000 (the inttermediate
`
`
`
`collectinng subsysstem), annd
`
`
`
`the DDataTreasuury™ Syystem
`ssing
`
`
`
`
`
`Processiing Concenntrator (DPPC) 600 (thhe central ddata proce
`
`subsysteem).
`
`Id. aat 4:60–67.
`
`
`4
`
`

`

`
`
`IPR22014-00489
`
`
`Patennt 5,910,9888
`
`
`
`
`
`Figure 22 of the ’9888 patent, pprovided b
`
`
`
`
`
`
`of thhe DAT (reemote data access subbsystem terrminal):
`
`
`
`elow, depiicts a blockk diagram
`
`
`
`
`
`
`
`
`
`As shown in Figure 2, a sscanner 2002 is conneected to a wworkstationn 210,
`
`
`
`
`
`
`whicch is conneected to a ddata systemm access coollector 30
`
`0. The woorkstation
`
`
`
`
`
`
`can bbe a generaal purpose computer and perforrms tasks iincluding
`
`comppressing, eencrypting,, and tagging a scannned bitmappped imagee. Id. at
`
`
`
`
`
`
`
`
`5:400–45, 7:31––35.
`
`
`
`
`
`The ’9888 patent is said to improve uponn the priorr art by prooviding an
`
`
`
`
`
`autommated, reliiable, secuure system tto process
`
`
`electronicc and paperr
`
`
`
`transsactions. IId. at 3:25––29.
`
`laim C. Illusstrative Cl
`
`
`
`
`
`
`
`
`
`
`
`in thhe ’988 patent and aree reproduced below:
`
`
`
`Independent claimms 26 and 442 are illusttrative of tthe challennged claimss
`
`5
`
`

`

`IPR2014-00489
`Patent 5,910,988
`
`
`for central management, storage and
`26. A method
`verification of remotely captured paper transactions from
`documents and receipts comprising the steps of:
`capturing an image of the paper transaction data at one or
`more remote locations and sending a captured image of the
`paper transaction data;
`managing the capturing and sending of the transaction
`
`data;
`
`the
`
`and
`
`storing
`
`sending
`collecting, processing,
`transaction data at a central location;
`managing the collecting, processing, sending and storing
`of the transaction data;
`encrypting subsystem identification information and the
`transaction data; and
`transmitting the transaction data and the subsystem
`identification information within and between the remote
`location(s) and the central location.
`
`42. A communication network for the transmission of data
`within and between one or more remote data processing
`subsystems, at least one intermediate data collecting subsystem
`and at least one central subsystem forming a tiered architecture
`wherein each of said at least one central data processing
`subsystem communicate with a corresponding some of said at
`least one data collecting subsystem and each of said at least one
`data collecting subsystem communicate with a corresponding
`some of said one or more data processing subsystems, said data
`processing subsystem including an imaging subsystem for
`capturing images of documents and receipts, comprising:
`at least one first local area network for transmitting data
`within a corresponding one of said one or more remote
`subsystems;
`at least one second local area network for transmitting
`data within a corresponding one of said at
`least one
`intermediate subsystem;
`
`6
`
`

`

`IPR2014-00489
`Patent 5,910,988
`
`
`at least one third local area network for transmitting data
`within a corresponding one of said at least one central
`subsystem; and
`at least one wide area network for transmitting data
`between said one or more remote subsystems, said at least one
`intermediate subsystem and said at least one central subsystem.
`
`D. References Relied Upon
`Petitioner relies upon the following references and the declaration of
`Mr. Stephen Gray (Ex. 1004):
`NATHAN J. MULLER, COMPUTERIZED DOCUMENT IMAGING
`SYSTEMS: TECHNOLOGY AND APPLICATIONS (Artech House,
`Inc., 1993) (“Imaging Systems”)
`INTERNATIONAL BUSINESS MACHINES CORP., 3890 DOCUMENT
`PROCESSOR APPLICATION PROGRAMMING (1st ed. 1985) (“IBM”)
`Liu
`US 5,031,089
`July 9, 1991
`ROBERT P. DAVIDSON & NATHAN J. MULLER,
`INTERNETWORKING LANS (Artech House, Inc., 1992)
`(“Internetworking LANs”)
`Golden
`US 5,774,872
`Berger
`US 5,091,975
`Lovendusky
`US 3,818,187
`Holt
`US 5,097,517
`Hoffman
`US 5,613,012
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`Ex. 1011
`
`June 30, 1998
`Feb. 25, 1992
`June 18, 1974
`Mar. 17, 1992
`Mar. 18, 1997
`
`Ex. 1012
`Ex. 1013
`Ex. 1014
`Ex. 1015
`Ex. 1016
`
`E. The Asserted Grounds of Unpatentability
`Petitioner argues that the challenged claims are unpatentable based
`upon the following grounds:
`Reference(s)
`Imaging Systems, Golden, and
`Internetworking LANs
`Imaging Systems, IBM,
`Internetworking LANs, and Golden
`
`Basis Claims Challenged
`§ 103 42-50, 70-75, 78-83, 93-
`118, and 121
`§ 103 22-25, 36, 38-41, 66-69, 84-
`92, 119, 120, 122, and 123
`
`7
`
`

`

`IPR2014-00489
`Patent 5,910,988
`
`
`Reference(s)
`Imaging Systems, IBM,
`Internetworking LANs, Golden, and
`Liu
`Imaging Systems, Golden,
`Internetworking LANs, and
`Lovendusky
`Imaging Systems, Golden,
`Internetworking LANs, and Holt
`Imaging Systems, Golden,
`Internetworking LANs, and at least
`one of Berger or Hoffman
`Imaging Systems, Golden,
`Internetworking LANs, IBM, and at
`least one of Berger or Hoffman
`
`Basis Claims Challenged
`§ 103 37
`
`§ 103 76
`
`§ 103 77
`
`§ 103 45, 50, 96, 101, 105, and
`113
`
`§ 103 87 and 92
`
`II. ANALYSIS
`
`A. 315(b)
`Patent Owner argues that the Petition should be denied under 35
`U.S.C. § 315(b) because Petitioner was served with a Third Party Complaint
`around June 8, 2012, more than one year prior to the filing of the Petition.
`Prelim. Resp. 4-5. Section 315(b) of Title 35 of the United States Code bars
`institution of inter partes review when the petition is filed more than one
`year after the petitioner (or the petitioner’s real party in interest or privy) is
`served with a complaint alleging infringement of the patent. 35 U.S.C.
`§ 315(b); 37 C.F.R. § 42.101(b). Patent Owner does not allege, however,
`that the Third Party Complaint served upon Petitioner alleged infringement
`of the ’988 patent. Based upon our review of the docket in DataTreasury v.
`Austin Bank, No. 6:11-CV-00470 (E.D. Tex.), the Third Party Complaint
`(Dkt. No. 225) filed against Petitioner on June 8, 2012, did not allege
`infringement of the ’988 patent. Ex. 3001. It alleged breach of contract and
`
`8
`
`

`

`IPR2014-00489
`Patent 5,910,988
`
`sought a declaratory judgment as to indemnity, warranty against
`infringement, and common law indemnity. Id. Because these causes of
`action are not an allegation of infringement of the ’988 patent, we conclude
`that the Petition is not barred under § 315(b).
`
`B. The Asserted Grounds
`In light of the arguments and evidence, Petitioner has not established a
`reasonable likelihood that the challenged claims are unpatentable for the
`reasons discussed below.
`Under our rules, the petition must contain a “full statement of the
`reasons for the relief requested, including a detailed explanation of the
`significance of the evidence . . . .” 37 C.F.R. § 42.22(a)(2). We, therefore,
`decline to consider information presented in a supporting declaration, but not
`discussed sufficiently in a petition; among other reasons, doing so would
`permit the use of declarations to circumvent the page limits that apply to
`petitions. For the same reasons, our rules prohibit arguments made in a
`supporting document from being incorporated by reference into a petition.
`See 37 C.F.R. § 42.6(a)(3).
`Petitioner alleges seven grounds of unpatentability. Pet. 18-55. For
`each ground, Petitioner provides a claim-by-claim analysis in which it
`alleges that the prior art teaches or suggests each element of the claim. Id.
`Petitioner cites, with few exceptions, only to the Declaration of Stephen
`Gray (“Gray Declaration”). Id. The Gray Declaration comprises 1,278
`paragraphs across 287 pages. Ex. 1004. In those paragraphs, Mr. Gray cites
`almost exclusively to a 1,003-page, single-spaced, claim chart in landscape
`format appended to his Declaration as Exhibit A. In the claim chart, Mr.
`Gray cites to the references themselves. Ex. 1004, Ex. A. As a result, the
`
`9
`
`

`

`IPR2014-00489
`Patent 5,910,988
`
`Petition involves three levels of incorporation: (1) the Petition incorporates
`the Gray Declaration; (2) the Gray Declaration incorporates the claim chart;
`(3) the claim chart incorporates from the references themselves.
`For the first ground (Pet. 18-38), for example, Petitioner’s analysis of
`independent claim 42 cites exclusively to the Gray Declaration, but for two
`citations to Golden (Exhibit 1012) on page 23. Pet. 19-25. In the nineteen
`paragraphs of the Gray Declaration cited for claim 42, Mr. Gray cites
`exclusively to a claim chart appended to his Declaration as Exhibit A, but
`for two citations to Golden in paragraph 732. Ex. 1004 ¶¶ 715-734. In the
`thirty-six pages of claim chart analyzing claim 42, Petitioner cites, finally, to
`the references themselves. Ex. 1004, Ex. A, 163-199. The end result is that
`six pages of Petition expand to thirty-six pages of citations to references.
`Petitioner uses the same approach for the other six grounds.
`On this record, the Petition’s extensive reliance on citations to the
`Gray Declaration in lieu of citations to the references themselves amounts to
`an incorporation by reference of arguments made in the Gray Declaration
`into the Petition, thereby circumventing the page limits that apply to
`petitions. We, therefore, decline to consider the information found only in
`the Gray Declaration.
`Based on the analysis presented in the Petition itself, and on our
`review of the portions of references cited in the Petition, Petitioner has not
`met its burden in establishing a reasonable likelihood that the challenged
`claims are unpatentable. Although the Petition includes some citations to
`the references themselves, those citations do not identify sufficiently the
`portions of the references alleged to teach or suggest the limitations of the
`challenged claims. This is not a case where the references relied upon are
`
`10
`
`

`

`IPR2014-00489
`Patent 5,910,988
`
`short documents that may be understood easily absent direct pointers to
`relevant disclosure. The references are voluminous. The most frequently
`cited references—Imaging Systems, IBM, and Internetworking LANs—are
`334 pages, 362 pages, and 296 pages, respectively. Exs. 1008, 1009, 1011.
`The few direct citations to the references themselves are not sufficient to
`establish a reasonable likelihood that the challenged claims are unpatentable.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition does not establish that there is a reasonable
`likelihood that Petitioner would prevail in establishing the unpatentability of
`the challenged claims of the ’988 patent. Accordingly, we deny the Petition
`and do not institute an inter partes review of the challenged claims of the
`’988 patent.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that the Petition challenging the patentability of claims
`22-25, 36-50, and 66-123 of U.S. Patent No. 5,910,988 is denied and no trial
`is instituted.
`
`
`11
`
`

`

`IPR2014-00489
`Patent 5,910,988
`
`For PETITIONER:
`
`Erika H. Arner
`Darren M. Jiron
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`erika.arner@finnegan.com
`darren.jiron@finnegan.com
`
`For PATENT OWNER:
`
`Abraham Hershkovitz
`Eugene C. Rzucidlo
`HERSHKOVITZ & ASSOCIATES, PLLC
`AHershkovitz@Hershkovitz.net
`GRzucidlo@Hershkovitz.net
`
`
`12
`
`

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