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 IPR2014-00490
`Patent 6,032,137
`
`
`
`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
`
`
`
`
`
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`
`
`571-272-7822
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`
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` Paper 9
`
`
`Entered: August 13, 2014
`
`
`
`
`
`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 IPR2014-00490
`Patent 6,032,137
`
`
`
`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
`
`
`
`
`
`
`
`
`
`IPR2014-00490
`Patent 6,032,137
`
`
`I.
`INTRODUCTION
`Fidelity National Information Services, Inc. (“Petitioner”) filed a
`Petition requesting inter partes review of claims 1, 2, 9, 11-27, 29-32, 34-46,
`48-52, 54-58, 60-64, 66, and 67 (“the challenged claims”) of U.S. Patent No.
`6,032,137 (Ex. 1002, “the ’137 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 ’137 patent. Accordingly, the
`Petition is denied.
`
`A. Related Proceedings
`Petitioner and Patent Owner indicate that the ’137 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 ’137 patent. Pet. 3-5; Paper 4, 2-4.
`Petitioner and Patent Owner also identify additional petitions for
`covered business method review of the ’137 patent: CBM2014-00020,
`CBM2014-00056, and CBM2014-00088. Pet. 3; Paper 4, 2; Paper 5, 1.
`Petitioner and Patent Owner also identify petitions for inter partes review
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`IPR2014-00490
`Patent 6,032,137
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`and for covered business method review of Patent Owner’s related U.S.
`Patent No. 5,910,988: CBM2014-00021, CBM2014-00057, CBM2014-
`00087, IPR2014-00489, and IPR2014-00491. Id.
`
`B. The ’137 patent
`The ’137 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 3:22–26.
`Generally, the ’137 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, 3:37–58, 4:65–5:15, 5:45–51, 16:53–60.
`Additionally, the general purpose network computer encrypts the images and
`data to provide a system with maximal security. Id. at 3:30–36, 7:38–42,
`8:10–13.
`Figure 1 of the ’137 patent, provided below, depicts a preferred
`embodiment of the system having three major operational elements:
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`IPR2014-00490
`Patent 6,032,137
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`The ’137 patent describes the tiered arrangement depicted in Figure 1 as
`follows:
`FIG. 1 shows the architecture of the DataTreasury™ System
`100. The DataTreasury™ System 100 has three operational
`elements: the DataTreasury™ System Access Terminal (DAT)
`200 (the remote data access subsystem), the DataTreasury™
`System Access Collector (DAC) 400 (the intermediate data
`collecting subsystem), and
`the DataTreasury™ System
`Processing Concentrator (DPC) 600 (the central data processing
`subsystem).
`Id. at 4:66–5:6.
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`IPR2014-00490
`Patent 6,032,137
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`Figure 2 of the ’137 patent, provided below, depicts a block diagram
`of the DAT (remote data access subsystem terminal):
`
`
`
`As shown in Figure 2, a scanner 202 is connected to a workstation 210,
`which is connected to a data system access collector 300. The workstation
`can be a general purpose computer and performs tasks including
`compressing, encrypting, and tagging a scanned bitmapped image. Id. at
`5:46-51, 7:38-42.
`The ’137 patent is said to improve upon the prior art by providing an
`automated, reliable, secure system to process electronic and paper
`transactions. Id. at 3:32-37.
`
`C. Illustrative Claim
`Independent claims 26 and 42 are illustrative of the challenged claims
`in the ’137 patent and are reproduced below:
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`IPR2014-00490
`Patent 6,032,137
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`for central management, storage and
`26. A method
`verification of remotely captured paper transactions from
`checks comprising the steps of:
`capturing an image of the paper transaction data at one or
`more remote locations said transaction data including a payer
`bank's identification number, a payer bank's routing number, a
`payer bank's routing information, a payer's account number, a
`payer's check, a payer bank's draft, a check amount, a payee
`bank's
`identification number, a payee bank's
`routing
`information, and a payee's account number; []
`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 system for central management, storage and report
`generation of remotely captured paper transactions from checks
`comprising:
`one or more remote data access subsystems for capturing
`and sending paper transaction data and verifying transaction
`data from the checks comprising at least one imaging
`subsystem for capturing the checks and at least one data access
`controller for managing the capturing and sending of the
`transaction data;
`at least one central data processing subsystem for
`processing, sending, verifying and storing the paper transaction
`data and the subsystem identification information comprising a
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`Patent 6,032,137
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`management subsystem for managing the processing, sending
`and storing of the of the transaction data; and
`at least one communication network for the transmission
`of the transaction data within and between said one or more
`data access subsystems and said at least one data processing
`subsystem, with the data access subsystem providing encrypted
`subsystem identification information and encrypted paper
`transaction data to the data processing subsystem.
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`Ex. 1011
`
`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
`Shyu
`US 5,923,792
`Froessl
`US 5,109,439
`Thomson
`US 4,948,174
`
`June 30, 1998
`Feb. 25, 1992
`June 18, 1974
`Mar. 17, 1992
`Mar. 18, 1997
`July 13, 1999
`Apr. 28, 1992
`Aug. 14, 1990
`
`Ex. 1012
`Ex. 1013
`Ex. 1014
`Ex. 1015
`Ex. 1016
`Ex. 1017
`Ex. 1018
`Ex. 1043
`
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`IPR2014-00490
`Patent 6,032,137
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`E. The Asserted Grounds of Unpatentability
`Petitioner argues that the challenged claims are unpatentable based
`upon the following grounds:
`Reference(s)
`Imaging Systems and IBM
`
`Basis Claims Challenged
`§ 103 42, 43, 56, 57, 61-63, and
`67
`§ 103 1, 2, 16, 18, 26, 44, 45,
`49-51, and 55
`§ 103 9, 11-14, and 19-21
`
`Imaging Systems, Thomson, and
`IBM
`Imaging Systems, Thomson, IBM,
`and Liu
`Imaging Systems, Thomson, IBM,
`Liu, and Shyu
`Imaging Systems, Thomson, IBM,
`and Internetworking LANs
`Imaging Systems, Thomson, IBM,
`Internetworking LANs, and Liu
`Imaging Systems, Thomson, IBM,
`Internetworking LANs, and Golden
`Imaging Systems, Thomson, IBM,
`and Froessl
`Imaging Systems, Thomson, IBM,
`Internetworking LANs, Liu, and
`Shyu
`Imaging Systems, Thomson, IBM,
`Internetworking LANs, Golden,
`Liu, and Shyu
`Imaging Systems, IBM, and Berger § 103 58 and 64
`Imaging Systems, Thomson, IBM,
`§ 103 46 and 52
`and Berger
`Imaging Systems, IBM, and any one
`of Golden, Lovendusky, or Holt
`Imaging Systems, Thomson, IBM,
`and any one of Golden,
`Lovendusky, or Holt
`
`§ 103 60 and 66
`
`§ 103 15
`
`§ 103 17 and 29
`
`§ 103 30 and 31
`
`§ 103 22-25, 36, and 38-41
`
`§ 103 27
`
`§ 103 32, 34, and 35
`
`§ 103 37
`
`§ 103 48 and 54
`
`8
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`IPR2014-00490
`Patent 6,032,137
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`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. 5-6. 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 ’137 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 ’137 patent. Ex. 3001. It alleged breach of contract and
`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 ’137 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
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`IPR2014-00490
`Patent 6,032,137
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`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 fourteen grounds of unpatentability. Pet. 18-54.
`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 primarily to the Declaration of Stephen Gray (“Gray
`Declaration”). Id. The Gray Declaration comprises 589 paragraphs across
`136 pages. Ex. 1004. In those paragraphs, Mr. Gray cites almost
`exclusively to a 213-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 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. 18-28), for example, Petitioner’s analysis of
`independent claim 42 cites primarily to the Gray Declaration. Pet. 19-23.
`For example, for element E2 of claim 42, Petitioner cites only to the Gray
`Declaration. Pet. 20-21. In the twelve 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 one citation to Imaging Systems in
`paragraph 153. Ex. 1004 ¶¶ 151-163. In the eleven pages of claim chart
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`IPR2014-00490
`Patent 6,032,137
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`analyzing claim 42, Petitioner cites, finally, to the references themselves.
`Ex. 1004, Ex. A, 169-180. The end result is that four pages of Petition
`expand to eleven pages of citations to references. Petitioner uses the same
`approach for the other thirteen 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
`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
`
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`IPR2014-00490
`Patent 6,032,137
`
`likelihood that Petitioner would prevail in establishing the unpatentability of
`the challenged claims of the ’137 patent. Accordingly, we deny the Petition
`and do not institute an inter partes review of the challenged claims of the
`’137 patent.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that the Petition challenging the patentability of claims 1,
`2, 9, 11-27, 29-32, 34-46, 48-52, 54-58, 60-64, 66, and 67 of U.S. Patent No.
`6,032,137 is denied and no trial is instituted.
`
`
`12
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`IPR2014-00490
`Patent 6,032,137
`
`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
`
`13
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`
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