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 IPR2014-00491
`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
`
`
`
`
`
`
`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 IPR2014-00491
`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
`
`
`
`
`
`
`
`IPR2014-00491
`Patent 5,910,988
`
`
`I.
`INTRODUCTION
`Fidelity National Information Services, Inc. (“Petitioner”) filed a
`Petition requesting inter partes review of claims 1, 2, 9, 11-21, 26, 27,
`29-32, 34, 35, 51-53, 55-62, 64, and 65 (“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. 4-5; Paper 4, 2-3.
`Petitioner and Patent Owner also identify several closed district court
`proceedings involving the ’988 patent. Pet. 4-5; 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. 4; Paper 4, 2; Paper 5, 1. Petitioner and Patent Owner also
`
`2
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`IPR2014-00491
`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
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`IPR22014-004991
`
`
`Patennt 5,910,9888
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`
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`’988 patennt describes the tieredd arrangemment depictted in Figuure 1 as
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`The
`
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`folloows:
`
`
`shows thee architectuure of the
`FIG. 1
`
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`DataTreaasury™ Syystem
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`
`
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`
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`100. Thhe DataTreeasury™ SSystem 1000 has thrree operattional
`
`
`
`elementss: the DataaTreasury™™ System
`
`
`Access TTerminal (DDAT)
`
`
`
`
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`200 (thee remote ddata accesss subsysteem), the DDataTreasuury™
`data
`System
`
`
`
`
`Access CCollector (DAC) 4000 (the inttermediate
`
`
`
`collectinng subsysstem), annd
`
`
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`the DDataTreasuury™ Syystem
`ssing
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`
`
`Processiing Concenntrator (DPPC) 600 (thhe central ddata proce
`
`subsysteem).
`
`Id. aat 4:60–67.
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`4
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`IPR22014-004991
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`Patennt 5,910,9888
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`
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`Figure 22 of the ’9888 patent, pprovided b
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`of thhe DAT (reemote data access subbsystem terrminal):
`
`
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`elow, depiicts a blockk diagram
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`As shown in Figure 2, a sscanner 2002 is conneected to a wworkstationn 210,
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`whicch is conneected to a ddata systemm access coollector 30
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`0. The woorkstation
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`can bbe a generaal purpose computer and perforrms tasks iincluding
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`comppressing, eencrypting,, and tagging a scannned bitmappped imagee. Id. at
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`5:400–45, 7:31––35.
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`The ’9888 patent is said to improve uponn the priorr art by prooviding an
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`autommated, reliiable, secuure system tto process
`
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`electronicc and paperr
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`
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`transsactions. IId. at 3:25––29.
`
`laim C. Illusstrative Cl
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`’9888 patent andd are reprooduced beloow:
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`
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`Independent claimm 26 is illusstrative of tthe challennged claimms in the
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`5
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`IPR2014-00491
`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;
`
`and
`
`storing
`
`the
`
`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.
`
`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”)
`Shyu
`US 5,923,792
`Froessl
`US 5,109,439
`
`July 13, 1999
`Apr. 28, 1992
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`Ex. 1011
`
`Ex. 1017
`Ex. 1018
`
`6
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`IPR2014-00491
`Patent 5,910,988
`
`
`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 1, 2, 16, 18, 26, 51, 52,
`56-61, and 65
`§ 103 9, 11-14, and 19-21
`§ 103 17 and 29
`
`Imaging Systems, IBM, and Liu
`Imaging Systems, IBM, and
`Internetworking LANs
`Imaging Systems, IBM,
`Internetworking LANs, and Liu
`Imaging Systems, IBM,
`Internetworking LANs, Liu, and
`Shyu
`Imaging Systems, IBM, Liu, and
`Shyu
`Imaging Systems, IBM, and Froessl § 103 27
`
`§ 103 30 and 31
`
`§ 103 32, 34, and 35
`
`§ 103 15
`
`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
`
`7
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`
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`IPR2014-00491
`Patent 5,910,988
`
`(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
`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 nine grounds of unpatentability. Pet. 17-43. 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 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
`
`8
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`IPR2014-00491
`Patent 5,910,988
`
`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. 17-29), for example, Petitioner’s analysis of
`independent claim 1 cites primarily to the Gray Declaration. Pet. 18-22. For
`example, for element T2E2 of claim 1, Petitioner cites only to the Gray
`Declaration. Pet. 19-20. In the twelve paragraphs of the Gray Declaration
`cited for claim 1, Mr. Gray cites exclusively to a claim chart appended to his
`Declaration as Exhibit A. Ex. 1004 ¶¶ 154-166. In the ten pages of claim
`chart analyzing claim 1, Petitioner cites, finally, to the references
`themselves. Ex. 1004, Ex. A, 2-12. The end result is that four pages of
`Petition expand to ten pages of citations to references. Petitioner uses the
`same approach for the other eight 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
`
`9
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`IPR2014-00491
`Patent 5,910,988
`
`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
`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 1,
`2, 9, 11-21, 26, 27, 29-32, 34, 35, 51-53, 55-62, 64, and 65 of U.S. Patent
`No. 5,910,988 is denied and no trial is instituted.
`
`
`
`10
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`
`
`IPR2014-00491
`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
`
`
`11
`
`
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