UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`PLAID TECHNOLOGIES, INC.,
`Petitioner
`v.
`
`YODLEE, INC.,
`Patent Owner
`_____________________
`IPR2016-00273
`U.S. Patent No. 6,317,783
`_____________________
`PETITIONER’S REPLY
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`

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`
`
`TABLE OF CONTENTS
`
`Page
`Introduction ......................................................................................................... 1 
`I. 
`II.  Claim Construction ............................................................................................. 3 
`A.  “Non-Public Personal Information” Should Not Be Given
`Patentable Weight ......................................................................................... 3 
`B.  If “Non-Public Personal Information” Is Given Patentable Weight,
`The Board Should Adopt Plaid’s Construction. ........................................... 6 
`C.  Yodlee’s Proposed Construction of The “Protocol” Limitation Is
`Not Supported by The Patent Specification. ................................................ 8 
`D.  The Board Should Confirm its Construction of “Intermediary Web
`Site.” ............................................................................................................. 9 
`III.  The Challenged Independent Claims Are Invalid In Light of The
`Combination Of the Prior Art References. ........................................................ 10 
`A.  Yodlee’s Argument Regarding the “Protocol” Limitation Fails to
`Address the Combination of the Prior Art References. ............................. 11 
`B.  The “Storing” Limitation Would Have Been Obvious to A Person of
`Ordinary Skill in The Art in Light of the References. ............................... 15 
`C.  The Prior Art References Render Obvious the Independent Claims,
`Even If the “Non-Public Personal Information” Term Is Given
`Patentable Weight. ...................................................................................... 18 
`IV.  The Combination of Sugiarto, Brandt, and Chow Was Obvious. ..................... 21 
`V.  The Challenged Dependent Claims Are Also Invalid. ...................................... 23 
`A.  Sugiarto Discloses the “Intermediary Web Site” Limitation of
`Claims 14-17 and 33-36. ............................................................................ 23 
`B.  Sugiarto Discloses the Various “Format” Limitations of Claims 14,
`15, 17, 33, 34 and 36. ................................................................................. 24 
`C.  The Combination of Sugiarto, Brandt, and Chow Discloses the
`“Monitoring Information” Limitation of Claims 2 and 21. ....................... 25 
`VI.  Conclusion ......................................................................................................... 25 
`VII. Petitioner’s Exhibit List .................................................................................... 26 
`
`
`
`i
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`

`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`Cases
`AstraZeneca LP v. Apotex, Inc.,
`633 F.3d 1042 (Fed. Cir. 2010) ........................................................................ 4, 5
`In re Distefano,
`808 F.3d 845 (Fed. Cir. 2015) .......................................................................... 3, 5
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 22
`In re Lowry,
`32 F.3d 1579 (Fed. Cir. 1994) .............................................................................. 5
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .......................................................................... 23
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 7
`Yodlee, Inc. v. Plaid Techs. Inc.,
`Case No. 14-cv-01445 (D. Del. filed Dec. 1, 2014) ........................................... 26
`Other Authorities
`MPEP § 2111.01(II) ................................................................................................. 17
`Regulations
`37 C.F.R. § 42.6(e) ................................................................................................... 28
`
`
`
`
`ii
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`

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`
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`
`
`
`
`GLOSSARY OF ABBREVIATIONS
`
`
`Shorthand
`
`BRI
`Petition
`POR
`Mowry Decl.
`
`Jawadi Decl.
`
`Description
`Broadest Reasonable Interpretation.
`Petition, Paper 1 (Dec. 2, 2015).
`Patent Owner Response, Paper 17 (Sept. 23, 2015).
`Declaration of Todd Mowry in Support of Petition for
`Inter Partes Review, Ex. 1008 (Dec. 16, 2015)
`Declaration of Zaydoon Jawadi in Support of Patent
`Owner Response, Ex. 2007 (Sept. 23, 2016).
`Decision Granting Institution, Paper 10 (June 8, 2016).
`Decision
`U.S. Patent No. 6,317,783, Ex. 1001 (Dec. 2, 2015).
`’783 patent
`U.S. Patent No. 6,278,449, Ex. 1004 (Dec. 2, 2015).
`Sugiarto
`U.S. Patent No. 5,892,905, Ex. 1005 (Dec. 2, 2015).
`Brandt
`U.S. Patent No. 6,029,175, Ex. 1006 (Dec. 2, 2015).
`Chow
`U.S. Patent No. 6,066,333, Ex. 1010 (Dec. 2, 2015).
`Nielsen
`“protocol for instructing the processor how to access the
`“Protocol”
`securely stored personal information via the network.”
`Limitation
`“Storing” Limitation “storing the retrieved personal information in [a/the]
`personal information store”
`Transcript of Deposition of Dr. Todd Mowry, Ex. 2005
`(Sept. 23, 2016).
`Transcript of Deposition of Mr. Zaydoon Jawadi, Ex.
`1014 (Dec. 9, 2016).
`Patent Owner Yodlee, Inc.
`Petitioner Plaid Technologies, Inc.
`
`Mowry Dep.
`
`Jawadi Dep.
`
`Yodlee
`Plaid
`
`iii
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`

`
`
`
`I.
`
`Introduction
`The Board correctly found that the Petition and the declaration testimony of
`
`Plaid’s expert Dr. Mowry establish that claims 1, 3–20, and 22–36 would have been
`
`obvious over Sugiarto and Brandt, and that claims 2 and 21 would have been obvious
`
`over Sugiarto, Brandt, and Chow. An ordinary skilled artisan would have been
`
`motivated to modify Sugiarto’s content gathering modules to incorporate the
`
`automatic authentication functionality of Brandt’s Application Gateway 332, such
`
`that the content gathering modules would obtain non-public information over the
`
`Web from Secure Content Providers. Petition at 20-21; Mowry Decl., ¶ 60. Dr.
`
`Mowry further explained that it would have been obvious to incorporate Chow’s
`
`revision manager to keep users apprised of changes to content. Id., ¶ 117. The
`
`Board’s well-reasoned analysis in the Institution Decision regarding obviousness
`
`stands untouched by Yodlee’s Response.
`
`Yodlee first proposes several claim constructions that are wholly unsupported
`
`by the claim language and the patent specification. For example, it rehashes the
`
`argument that the term “non-public personal information” should carry patentable
`
`weight. The Board correctly rejected this proposition, finding instead that term has
`
`no functional or structural relationship to the remainder of the claim and therefore
`
`should not mean anything beyond “merely information.” Yodlee also raises, for the
`
`first time, constructions for the terms “protocol for instructing the processor how to
`
`
`
`
`
`

`
`
`
`access the securely stored personal information via the network” and “intermediary
`
`web site.” As explained in detail below, neither of Yodlee’s proposed constructions
`
`is supported by the ’783 patent specification. Moreover, even if the claim terms
`
`were given Yodlee’s proposed constructions (which they should not), the prior art
`
`combinations would still render obvious the challenged claims of the ’783 patent.
`
`Second, Yodlee spends most of its response arguing that the individual
`
`references (Sugiarto, Brandt, and Chow) fail to disclose a “protocol for instructing
`
`the processor how to access the securely stored personal information via the
`
`network” and “storing the retrieved personal information in [a/the] personal
`
`information store,” as required by independent claims 1, 18, and 20. However, the
`
`Board instituted review of these claims on the grounds that they were rendered
`
`obvious by the combination of Sugiarto and Brandt. Yodlee’s arguments do not
`
`rebut that the combination of these references renders these claim limitations
`
`obvious.
`
`Third, Yodlee asserts that the individual prior art references fail to disclose
`
`various claim elements of
`
`the challenged dependent claims—namely, an
`
`“intermediary website,” various “format” limitations, and “monitoring information
`
`providers for changes.” However, as with its challenges to the independent claims,
`
`Yodlee fails to address the combination of the prior art references that render
`
`obvious these claim limitations.
`
`
`
`2
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`

`
`
`
` Finally, Yodlee argues against combining Sugiarto, Brandt, and Chow, but
`
`cites no evidence that contradicts Dr. Mowry’s detailed and contemporaneously
`
`supported testimony that those of ordinary skill would have sought to combine
`
`Sugiarto, Brandt, and Chow, and would not have encountered technical difficulties
`
`in doing so.
`
`II.
`
`
`
`Claim Construction
`A.
`“Non-Public Personal Information” Should Not Be Given
`Patentable Weight
`The Board’s application of the printed matter doctrine and determination that
`
`“non-public personal information” is not entitled to patentable weight was correct.
`
`Yodlee’s arguments should be rejected because it applies the wrong test, mistakenly
`
`focusing on the information being “non-public” and “personal.” The Board properly
`
`focused on the salient issue for the printed matter doctrine – whether “the claimed
`
`informational content has a functional or structural relation to the substrate.” In re
`
`Distefano, 808 F.3d 845, 850 (Fed. Cir. 2015) (emphasis added). In the claims,
`
`“non-public personal information” merely recites “the type of information it
`
`communicates.” Decision at 7-8. “[N]o recitation in claims 1–36 is functionally or
`
`structurally dependent on the content of the recited ‘non-public personal
`
`information.’” Id. (emphasis added).
`
`
`
`Yodlee contests the Board’s decision and argues that Dr. Mowry “agreed” that
`
`the claim elements structurally depend on the “non-public personal information”
`
`
`
`3
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`

`
`
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`because elements in the claim are “motivated by” the information being non-public.
`
`POR at 14-15.
`
`
`
`That argument is doubly flawed. First, Dr. Mowry was using Plaid’s
`
`definition of “non-public” – securely stored information – when answering the
`
`question cited by Yodlee. He never agreed that the elements were structurally and
`
`functionally related to the “content.”
`
`
`
`Second, the patent specification does not support the contention that the
`
`invention was “motivated by” non-public information. Instead, as the Board found,
`
`the patent states that “non-public personal information” is simply information “that
`
`is specific or unique to each person.” ’783 patent at 4:15-21. The patent, in turn,
`
`clearly discloses processing public information that is specific to a user, such as
`
`“stock portfolio, local weather, [and] sports scores.” Id. at 3:5-9. In light of the
`
`patent specification’s broad definition of “non-public personal information,” the
`
`Board correctly concluded that the claimed informational content had no functional
`
`or structural relationship to the substrate that holds the content. Decision at 8.
`
`
`
`The term “non-public personal information” of the ’783 patent is analogous
`
`to the claimed label in AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1065 (Fed.
`
`Cir. 2010). In AstraZenca, the Federal Circuit held that the instructions on the
`
`claimed label were “not functionally related to the substrate” and therefore
`
`“[r]emoving the instructions from the claimed kit does not change the ability of the
`
`
`
`4
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`

`
`
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`drug to treat respiratory disease.” Id. “Non-public personal information” should be
`
`denied patentable weight for the same reason. Specifically, the claimed
`
`informational content “is neither functionally related to the performance of the
`
`claimed methods nor structurally related to the claimed systems. Indeed, any
`
`information content, and not just ‘non-public personal information,’ could be subject
`
`to the same recitations in the claims.” Decision at 8.
`
`
`
`The cases that Yodlee relies upon are inapposite. In In re Lowry, the claimed
`
`data structure “provide[d] an efficient, flexible method for organizing stored data in
`
`computer memory” by disclosing “a data structure accessible by many different
`
`application programs.” 32 F.3d 1579, 1580 (Fed. Cir. 1994). The Federal Circuit
`
`concluded that the claimed data structures were “physical entities that provided
`
`increased efficiency in computer operation.” Id. at 1584. Likewise, in Distefano,
`
`the Federal Circuit provided two reasons why the claimed written information
`
`should be given patentable weight: the sequence specified the structure of a band
`
`and the text specified the volume of the measuring vessel. 808 F.3d at 850. In
`
`contrast with the ’783 patent, whether the information is “non-public” or “personal”
`
`does not “functionally relate[] to the performance of the claimed methods [or]
`
`structurally relate[] to the claimed system.” Decision at 8.
`
`
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`5
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`
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`B.
`
`If “Non-Public Personal Information” Is Given Patentable
`Weight, The Board Should Adopt Plaid’s Construction.
`If the Board reverses its Decision and construes “non-public personal
`
`information,” it should construe the term to mean “information pertinent to an end
`
`user that is protected by a login.” See Petition at 12. As discussed below, Yodlee’s
`
`proposed construction – “information relating to a specific end sure that is not
`
`intended for access by persons other than that end user or those authorized by that
`
`end user” – is not supported by the Broadest Reasonable Interpretation standard
`
`viewed in light of the patent specification.
`
`The ’783 patent specification first recites that “electronic [personal
`
`information] associated with the particular end user” can be “stock portfolio, local
`
`weather, [and] sports scores.” ’783 patent at 3:4-7. The specification further
`
`explains that “personal information” is information “that is specific or unique to
`
`each person.” Id. at 4:15-21. Although the disclosed “unique information” can be
`
`limited to Yodlee’s construction, the “specific information” cannot. Stock quotes,
`
`the local weather, and sports scores are not “intended for access by certain persons,”
`
`but are instead, public information that is of specific interest to certain end users. As
`
`such, Plaid’s proposed construction – “information pertinent to an end user that is
`
`protected by a login” – is the broadest reasonable interpretation in light of the
`
`specification.
`
`
`
`6
`
`

`
`
`
`Yodlee’s proposed construction should also be rejected because it is
`
`ambiguous. Specifically, it relies on whether the information is “intended” for
`
`access by certain persons, but the construction does not specify whose intent is
`
`implicated or how a personal of ordinary skill in the art is supposed to determine that
`
`person or system’s intent. Yodlee’s expert Mr. Jawadi opined that the construction
`
`implicates the intent of the “PI engine,” Jawadi Dep. at 67:8-19, but this just
`
`exacerbates the ambiguity of the construction. Claim 1 of the ’783 patent does not
`
`recite a PI engine and it is not clear how a PI engine (a computerized system) can
`
`have intent.
`
`Yodlee attempts to rescue its improperly narrow construction by relying on
`
`the File History of the ’783 patent (Ex. 1002 at 168), but the File History does not
`
`limit “non-public personal information” as Yodlee contends. Instead, the File
`
`History focuses on explaining the “essence” of personal information and reasons
`
`why it might be protected. Importantly, Yodlee’s cited passage does not preclude
`
`any of the examples expressly included in the ’783 patent specification – e.g., stock
`
`quotes, sports scores, etc. – from being personal information. See Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc).
`
`
`
`Yodlee’s reliance on Dr. Mowry’s deposition testimony is also misplaced.
`
`Despite its best attempts to mischaracterize Dr. Mowry’s testimony, he clearly
`
`explained that the fact that the information is personal does not change how the
`
`
`
`7
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`

`
`
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`claimed system behaves. To put plainly, whether the information is personal or not
`
`is “not relevant to how the mechanism works.” Mowry Dep. at 54:11–12, 54:20-21.
`
`C. Yodlee’s Proposed Construction of The “Protocol” Limitation Is
`Not Supported by The Patent Specification.
`Yodlee seeks to construe the phrase “protocol for instructing the processor
`
`
`
`how to access the securely stored personal information via the network” to mean a
`
`“software script detailing the steps necessary for instructing the processor how to
`
`login to a specific information provider as the end user, and return requested
`
`information via the network.” POR at 17. Yodlee, however, adds to this
`
`construction by later asserting that the protocol “enables the processor to
`
`automatically retrieve non-public personal information without requiring the user to
`
`manually request that information every time.” Id. at 24 (emphasis added).
`
`Yodlee identifies no support in the specification to support its construction,
`
`and there is none. As a preliminary matter, Yodlee’s proposed construction in
`
`Section III.C. of its Response does not include the “automatic” limitation it attempts
`
`to sneak in in Section IV.A.1. As such, even Yodlee’s original proposed
`
`construction does not exclude a user triggering the software script by logging into a
`
`personal information service. See Mowry Decl., ¶¶ 90-92 (citing Brandt at 20:60-
`
`67). Indeed, the ’783 specification describes several embodiments where the user
`
`manually requests information. For example, the specification describes that “[i]n
`
`order to provide personal information to an end user quickly after login” “[o]ne
`
`
`
`8
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`

`
`
`
`approach . . . is to update all of an end user’s PI whenever the end user . . . requests
`
`access to his/her PI.” ’783 patent at 10:32-38. The specification further describes
`
`that “[a]nother approach would be to update all of an end user’s PI . . . whenever PI
`
`from that supplier is requested.” Id. at 10:38-40. Both of these embodiments
`
`contemplate the end user manually requesting the software script to initiate.
`
`
`
`Faced with no evidence to support its contrived constructions, Yodlee again
`
`cherry picks at Dr. Mowry’s deposition testimony to confuse the issues before the
`
`Board. However, Yodlee does not—and cannot—point to any portion of Dr.
`
`Mowry’s testimony or declaration where he agrees that the initiation of the software
`
`script as required by the ’783 patent must be automated.
`
`In light of the claim language, the patent specification, and the extrinsic
`
`evidence, Yodlee’s construction of the claim term must be rejected. The term
`
`should, instead, be given its plain and ordinary meaning.
`
`D. The Board Should Confirm its Construction of “Intermediary
`Web Site.”
`Yodlee also asserts that the Board erred in its construction of “intermediary
`
`
`
`web site,” because the Board’s construction “only includes a small portion of the PI
`
`engine.” POR at 16. Yodlee, proposes that “intermediary web site” should instead
`
`be construed to mean “a web site served from a location other than the end user’s
`
`computer and other than the ‘processor’ and all associated data/storage (including
`
`
`
`9
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`

`
`
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`the ‘personal information store,’ ‘end user data,’ ‘user store,’ ‘information provider
`
`data,’ and ‘provider store’).” Id.
`
`Yodlee’s proposed construction would improperly introduce several layers of
`
`ambiguity. First, the proposed construction recites a number of system components
`
`that are not present in the underlying claims. For example, claim 14, which
`
`introduces the claimed “intermediary web site,” does not recite a “user store” or
`
`“information provider store.” Moreover, Yodlee has not explained what it means
`
`for a web site to be served from a “location other than end user data” or “a location
`
`other than information provider data.” “Data” is not a structural component, so it is
`
`unclear how one would determine when a web site is being served from a location
`
`other than “data.”
`
`In light of the foregoing deficiencies, Yodlee’s construction should be
`
`rejected, and the Board should confirm its construction of this term.
`
`III. The Challenged Independent Claims Are Invalid In Light of The
`Combination Of the Prior Art References.
`The Petition and Dr. Mowry’s declaration established that, in view of the level
`
`
`
`of ordinary skill, the challenged claims would have been obvious over the
`
`combination of the cited references. Yodlee fails to rebut that evidence, and instead
`
`provides a misdirected challenge to what the individual references disclose. Yodlee
`
`does not address the proper legal inquiry of whether the combination of these
`
`
`
`10
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`

`
`
`
`references and the knowledge of skilled artisans would render these limitations
`
`obvious.
`
`A. Yodlee’s Argument Regarding the “Protocol” Limitation Fails to
`Address the Combination of the Prior Art References.
`Yodlee argues that neither Sugiarto nor Brandt discloses a “protocol for
`
`
`
`instructing the processor how to access the securely stored personal information via
`
`the network” limitation because: (1) “Sugiarto only discloses retrieving public
`
`information from public websites” (POR at 22); (2) “there is no authentication script
`
`in Brandt” (POR at 23); and (3) “Brandt also fails to disclose accessing information
`
`of any kind” (POR at 26). This argument fails because it cherry picks at the
`
`individual references, but does nothing to refute that the combination of Sugiarto
`
`and Brandt discloses the claim limitation.
`
`As a primary issue, despite claiming that this argument does not depend on
`
`whether “non-public personal information” is given patentable weight, Yodlee opens
`
`with that very argument by attacking Sugiarto for “only disclos[ing] retrieving
`
`public information from public websites.” POR at 22. The Board properly rejected
`
`this argument when it declined to give patentable weight to the “non-public” and
`
`“personal” limitations. Decision at 16. Sugiarto irrefutably discloses retrieving
`
`information generally. See e.g., Petition at 16-17 (quoting Sugiarto, 8:61-9:1).
`
`But even if “non-public information” were should be given patentable weight,
`
`Yodlee’s argument would still fail because it does not address the Board’s finding
`
`
`
`11
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`

`
`
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`that the combination of Sugiarto and Brandt renders this this claim limitation
`
`obvious under § 103. Decision at 17-19. As discussed below, each of the allegedly
`
`missing claim elements is disclosed by either Sugiarto or Brandt, and it would have
`
`been obvious for an ordinary skilled artisan to combine the teachings of Sugiarto
`
`with Brandt.
`
`First, even if “Sugiarto only discloses retrieving public information from
`
`public websites,” Brandt explicitly discloses accessing non-public information. As
`
`discussed in the Petition and adopted by the Board, Brandt teaches that “access to
`
`protected software application 342 is only granted after gateway 332 supplies the
`
`user’s user name and password.” Petition at 29 (citing Brandt at 12:15-36); Mowry
`
`Decl., ¶ 78. Yodlee does not, and cannot, refute the Board’s conclusions on this
`
`issue.
`
`Second, Brandt discloses an “authentication script” as it is properly construed.
`
`Yodlee spends several pages discussing that users of Brandt “must manually input a
`
`password and login to gain access to the software application” and asserts that “Dr.
`
`Mowry agreed that Brandt discloses a manual login.” POR at 23-26. However, as
`
`discussed in Section II.C., neither the claim language nor the specification support a
`
`narrow construction of “authentication script” to require automatic initiation. See
`
`Section II.C., supra. In fact, the ’783 patent specification discloses several preferred
`
`embodiments where information gathering is initiated upon a user’s manual
`
`
`
`12
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`
`
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`request—exactly as it is done in Brandt. ’783 patent at 10:35-43 (“One approach . .
`
`. is to update all of an end user’s PI whenever the end user . . . requests access to
`
`his/her PI. Another approach would be to update all of an end user’s PI supplied by
`
`a particular provider whenever PI from that supplier is requested.”). Moreover, this
`
`“automatic” limitation is not even included in Yodlee’s own proposed construction
`
`of the term “protocol for instructing the processor how to access the securely stored
`
`personal information via the network.” POR at 17-18; see Section II.C., supra.
`
`As such, “authentication script,” as understood in the context of the claim and
`
`the patent specification, does not require automation initiation. Therefore, as Board
`
`concluded, Brandt’s APIs teach an “authentication script” by “specify[ing] how the
`
`Application Gateway 332 initially logs on to software applications, creates a process
`
`instance of the software application, and starts the process to process the end user’s
`
`request.” See Decision at 17.
`
`Third, Sugiarto and Brandt separately disclose accessing information. As a
`
`preliminary matter, contrary to Yodlee’s assertions, Brandt explicitly teaches
`
`retrieving accessed information. See Brandt, 26:49-53. (“Each individual activity
`
`program 432 . . . is designed to accomplish a specific task or return some requested
`
`
`
`13
`
`

`
`
`
`information.”) (emphasis added).1 For example, Brandt describes a system
`
`retrieving a car rental “confirmation number” for a user’s rental and providing it to
`
`the user. Id. at 28:58–61. In fact, Yodlee’s expert testified that his declaration
`
`overstated that Brandt did not disclose accessing information. See Jawadi Dep. at
`
`192:25-193:13 (“If I were to rewrite it, perhaps I might consider that change.”).
`
`Separately, Yodlee does not, and cannot, challenge the fact that Sugiarto accesses
`
`and retrieves information from Internet websites. See e.g., Petition at 16-17 (quoting
`
`Sugiarto, 8:61–9:1).
`
`In light of the foregoing, either Sugiarto or Brandt discloses each of the
`
`alleged missing claim elements, such that the combination of the references
`
`discloses a “protocol for instructing the processor how to access the securely stored
`
`personal information via the network.” As discussed below in Section IV, an
`
`ordinary skilled artisan would have been motivated to combine Sugiarto and Brandt,
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`and the combination would have led to predictable results.
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` 1 Yodlee mistakenly asserts that “[t]he word ‘information’ is never used in
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`Brandt.” POR at 33. The word “information” appears at least 91 times. See,
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`e.g., Brandt at 12:6, 12:40, 12:47.
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`14
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`B.
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`The “Storing” Limitation Would Have Been Obvious to An
`Ordinary Skilled Artisan in Light of the References.
`The Petition asserts that it would have been obvious for an ordinary skilled
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`artisan to use Sugiarto’s System Server 2 with modified modules 14, 16, and 18 to
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`“store retrieved personal information in a storage element.” Petition at 39-41.
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`Contrary to Yodlee’s assertion that Dr. Mowry’s analysis on this point is “not based
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`on any specific rationale,” (POR at 28), Dr. Mowry, in fact, provides significant
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`reasoning for why this claim limitation would have been obvious, including:
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`It would also have been desirable that modules 14, 16, and 18 would
`store retrieved personal information in a storage element. One of
`ordinary skill in the art would have appreciated that storing the retrieved
`personal information and then accessing the stored information in a
`subsequent routine would have been the most commonplace way of
`sending retrieved information to an end user.
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`Mowry Decl. ¶ 66 (emphasis added); Petition at 25. Dr. Mowry further explains, in
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`detail, how and why an ordinary skilled artisan would have accomplished storing
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`retrieved personal information.
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`First, Dr. Mowry explains that in October 1998, there were “two main ways
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`of storing information,” either as separate files or a database. Mowry Decl. ¶ 97.
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`The ’783 patent confirms this understanding. ’783 patent at 5:9-16 (“The PI store
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`280 may be implemented in a variety of ways. . . . [T]he PI store 280 may comprise
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`a database. . . . In yet another embodiment, the PI for each end user 210 could be
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`15
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`

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`stored in a separate file 375.”). In fact, the ’783 patent explicitly discloses a specific
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`prior art system that uses computer cookie technology to implement the “personal
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`information store.” Id. at 5:17-32 (“the PI associated with each user 210 may reside
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`on his/her client computer 220 using cookie technology”). As such, how to store
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`retrieved information in a memory was well known in the art, and methods to do so
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`were commonplace. Dr. Mowry’s deposition testimony supports these assertions.
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`Mowry Dep. at 95:1-8; 96:8-17 (“To be honest, it’s – I think it’s an unnecessary –
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`it’s a fanciful term because it doesn’t really have any particular interesting or non-
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`obvious function because all that is, is when you get the information back, you store
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`it somewhere, which is obvious that that would always have to happen.”). Yodlee
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`fails to rebut these assertions.
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`Second, Dr. Mowry thoroughly explained why an ordinary skilled artisan
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`would have been motivated to modify Sugiarto’s modules 14, 16, and 18 to store
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`retrieved personal information in a storage element. Specifically, Dr. Mowry stated
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`that “[a] person of ordinary skill would have been motivated to store the user’s
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`personal information in a database, for example, because databases allowed for
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`efficient access to stored content.” Mowry Decl. ¶ 97. Dr. Mowry further explained
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`that databases allow for efficient access, including the use of scripted queries (e.g.,
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`written in SQL) and attributes associated with the personal information. Id. ¶¶ 97-
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`98.
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`16
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`Finding no support for its arguments in the patent specification, Yodlee
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`chooses to mischaracterize Dr. Mowry’s testimony by asserting that “[a]ll Dr.
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`Mowry is alleging is that the information would temporarily reside in a temporary
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`memory or cache.” POR at 29. But Dr. Mowry did not mention a “temporary
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`memory” or a “cache.” Instead, he was responding to Yodlee’s specific questions
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`about whether information needed to be stored once it was transmitted to the user,
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`to which he responded that the system would, “[a]t minimum,” store information
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`before it is sent to the user. Mowry Dep. at 95:1-8 (“Q. Would that require storing
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`it in memory after transmitting the information to the user . . .? A. If you don’t need
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`it anymore after you transmit it to the user, you could overwrite the memory, . . . but
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`you would still be storing it before you sent it on to the user. At minimum.”). This,
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`of course, does not preclude the obvious use of other storage systems, e.g., a
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`database. Moreover, the claim language does not exclude temporary storage, and
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`the passage of the ’783 patent that Yodlee cites (POR at 29-30) is merely an
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`embodiment that does not limit the claims. MPEP § 2111.01(II).
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`Seeking to distinguish Sugiarto from the ’783 patent, Yodlee then asserts that
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`the information stored in Sugiarto only relates to “news, stock quotes, [and] sports
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`scores” POR at 28-29. Yodlee suggests that this type of information is incompatible
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`with the claimed “personal information store” because the patent “expressly
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`described as a specific storage that, for example, can be used to maintain retrieved
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`17
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`personal information over time so that only stale (out-of-date) information needs to
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`be re-retrieved.” Id. at 29. But Yodlee does not—and cannot—cite to any support
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`for limiting the type of data processed by the “personal information store.” In fact,
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`as discussed above, the ’783 patent explicitly teaches that “electronic PI associated
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`with the particular end user” can include “stock portfolio, local weather, [and] sports
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`scores.” ’783 Patent at 3:5–8.
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`In light of the foregoing, it would have been obvious to an ordinary skilled
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`artisan—in light of Sugiarto, Brandt, and his or her experience in the art—to “stor[e]
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`the retrieved personal information in [a/the] personal info