UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________________________
`
`
`
`Twilio Inc.
`Petitioner
`
`v.
`
`TeleSign Corporation
`Patent Owner
`
`Patent No. 8,462,920
`
`Patent Filing Date: October 5, 2006
`
`
`
`Title: REGISTRATION, VERIFICATION AND NOTIFICATION
`SYSTEM
`
`__________________________________________________
`
`Inter Partes Review No.: IPR2016-00450
`
`_________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`7517007
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`
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`Table of Contents
`
`I.
`
`INTRODUCTION ..................................................................................................... 1
`
`II. MANDATORY DISCLOSURE UNDER 37 C.F.R. §42.8(b)(2) ............................. 2
`
`III. OVERVIEW .............................................................................................................. 2
`A.
`The ‘920 Patent. .................................................................................... 2
`B.
`Summary of the Petition’s Deficiencies. ............................................... 4
`
`IV. LEGAL STANDARDS ............................................................................................. 7
`A.
`Standard for Granting Inter Partes Review .......................................... 7
`B.
`Standard for Claim Construction in Inter Partes Review ..................... 8
`
`C.
`
`Standard for Obviousness .................................................................... 10
`
`V.
`
`CLAIM CONSTRUCTION ..................................................................................... 11
`A.
`Summary ............................................................................................. 11
`B.
`A notification event ultimately leads to registrants being
`notified that the event occurred (if the event occurs). ......................... 12
`Petitioner’s construction should not be adopted because it reads
`out “notification” from “notification event.” ...................................... 15
`
`C.
`
`2.
`
`1.
`
`The Shamos Declaration’s claim-construction comments
`should be given no weight. ....................................................... 17
`The Petition does not adequately support its proposed
`construction. .............................................................................. 20
`Petitioner’s proposal is not true to the claim language and
`description. .......................................................................................... 21
`
`D.
`
`2.
`
`VI. LACK OF OBVIOUSNESS .................................................................................... 22
`A. Overview of the Primary Reference, Bennett. .................................... 22
`1.
`Bennett expressly states that it is not concerned with
`verifying the identity of individual users–one of the clear
`issues addressed by the ‘920 Patent. ......................................... 23
`The Petition fails to establish that Bennett teaches or
`suggests a verification and notification process. ...................... 25
`The Petition fails to establish that Bennett teaches or
`suggests establishing a notification event. ................................ 28
`Even if Petitioner’s construction of “notification event”
`were correct, the Petition fails to establish that Bennett
`
`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`teaches or suggests establishing a notification event
`associated with the registrant. ................................................... 29
`The Petition fails to establish that Bennett teaches re-
`verifying
`the
`registrant
`electronic
`contact
`after
`identifying the occurrence of an established notification
`event. ......................................................................................... 30
`Even if Bennett were to render obvious “establishing a
`notification event associated with the registrant,” the
`Petition fails to establish that Bennett teaches or suggests
`re-verifying a
`registrant electronic contact after
`identifying the occurrence of an established notification
`event. ......................................................................................... 31
`An ordinary skilled artisan would not be motivated to
`modify Bennett as suggested by the Petition. ........................... 34
`The Shamos Declaration improperly relies upon Thoursie
`in its proposed challenge of Ground 1 even though
`Ground 1 is purportedly solely based on Bennett. .................... 36
`
`B.
`
`C.
`
`If Petitioner’s position that a “notification event” may simply
`be any “event” and any “verification” subsequent to an initial
`verification is a “re-verification” upon detection of such event
`is to be accepted, then the ‘421 Application also must be
`interpreted as disclosing these limitations. .......................................... 37
`1.
`If the ‘421 Application adequately supports the invention
`claimed in the ‘920 Patent, then the ‘920 Patent is
`entitled to a priority date at least equivalent to that of the
`filing date of the ‘421 Application. ........................................... 39
`Bennett, Thoursie, Rolfe and Woodhill are not analogous art. ........... 39
`
`VII. THE SHAMOS DECLARATION IS ENTITLED TO NO WEIGHT. .................. 40
`1.
`The Shamos Declaration inconsistently considers and
`uses the terms “verification,” “re-verification,” and “two-
`factor authentication.” ............................................................... 42
`The hypothetical scenarios in the declaration are not
`supported by the citations in the declaration. ........................... 45
`The declaration adds and omits words from allegedly
`direct quotations. ....................................................................... 46
`
`2.
`
`3.
`
`VIII. CONCLUSION ........................................................................................................ 48
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`I.
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`INTRODUCTION
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`
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`In accordance with 37 C.F.R. § 42.107, Patent Owner TeleSign Corporation
`
`(“Patent Owner”) submits this preliminary response to the Petition filed by Twilio
`
`Inc. (“Petitioner”) requesting inter partes review of claims 1-10, 13 and 17-22 of
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`U.S. Patent No. 8,462,920 (the “‘920 Patent”).
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`The Board should deny Twilio’s Petition because it fails to show a
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`reasonable likelihood that Petitioner will prevail with respect to at least one
`
`challenged claim. The Petition suffers from three independently fatal flaws, each
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`of which is a sufficient basis to deny institution of inter partes review. First, the
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`Petition relies on improper claim constructions. This infects the Petition’s prior-art
`
`analysis. Second, the Petition has not shown that the cited references, alone or in
`
`combination, teach1 or suggest all elements of the claims. For elements not taught
`
`in the primary reference, the Petition does not provide a sufficient rationale for
`
`modifying the primary reference to include the missing features. The main
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`limitations of independent claim 1 that are not taught include 1) “establishing a
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`notification event associated with the registrant,” 2) identifying an occurrence of
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`the established notification event,” 2) “after identifying the occurrence of the
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`1 Uses herein of “teach”/”teaches” means “teach or suggest”/“teaches or
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`suggests” even if “or suggest” is occasionally omitted.
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`established notification event, re-verifying the registrant electronic contact,” and 4)
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`“a verification and notification2 process.” Finally, the Petition detrimentally
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`depends on a declaration (the “Shamos Declaration”) that is entitled to little or no
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`weight. The Petition lacks independent evidentiary support. And without the
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`Shamos Declaration, it cannot support the conclusory statements made.
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`II. MANDATORY DISCLOSURE UNDER 37 C.F.R. §42.8(b)(2)
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`The ‘920 Patent is asserted against Petitioner in concurrent litigation styled
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`TeleSign Corp. v. Twilio Inc., No. 2:15-cv-03240. Co-pending petitions for inter
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`partes review in IPR No. 2016-00451 and IPR No. 2016-00360, also filed by
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`Petitioner, identified this Petition as a related matter. Patent Owner does not
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`foresee at this time that the decision in this Petition will affect, or be affected by,
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`these other Petitions.
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`III. OVERVIEW
`
`A. The ‘920 Patent.
`
`One issue addressed by the ‘920 Patent is preventing fraud and identity theft
`
`by verifying the identity of registrant users–verifying that users are who they say
`
`
`2 All bolding, italics, and other emphasis appearing in any quoted matter has
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`been added by the Patent Owner unless indicated otherwise. Thus, we do not
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`respectively indicate “emphasis added” throughout this document.
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`they are–and providing for the notification to registrant users that certain
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`notification events have occurred. EX 1001 at 1:41-51 (“fraud or identity theft …
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`can be largely avoided by notifying the account owner of these acts …”). This
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`problem is particularly acute with respect to fraudulent communications or
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`financial transactions where accounts can quickly be compromised. EX 1001 at
`
`1:48-50 (“When credit cards, account numbers, and the like are stolen, these
`
`accounts are quickly drained of cash or credit over a short period of time.”). The
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`inventors understood that alerting the user to certain notification events could
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`benefit both the user/consumer and the online business. EX 1001 at 1:57-59
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`(“There are also instances … in which notification could benefit both the consumer
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`as well as the business.”). In certain situations, a registrant’s electronic contacts
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`are re-verified even though they have already been verified at least once before.
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`Another issue addressed by the ‘920 Patent is preventing fraudulent website
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`registrations, such as attempts by fraudsters to pass off false registration
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`information as legitimate. EX 1001 at 1:34-36 (“However, when doing business
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`on the Internet, potential registrants often register with untraceable or false e-mail
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`addresses and phone numbers.”). See also EX 1001 at 4:46-48 (“[A] present
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`problem with on-line registrations is that the registrant often registers with
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`untraceable and false e-mail addresses and telephone numbers.”). This problem has
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`only increased, and today some websites are besieged with hundreds of thousands,
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`or even millions, of fake-registration attempts per day, a problem that the inventors
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`recognized even in 2005 could lead to security breaches and fraud on the website
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`owners. EX 1001 at 1:36-38 (“This can compromise the intended purpose of the
`
`registration, create a breach of security and constitute fraud on the web-site
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`owners.”).
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`The proliferation of online fraud and fake website registrations are recent
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`problems rooted in computer technology. Before widespread adoption of the
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`Internet, companies did not face the problems of people trying to make fake
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`website registrations or steal user’s online identities. The ‘920 Patent meets these
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`recent problems rooted in computing and Internet technology with a corresponding
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`computer-related solution. A solution provided by the claimed invention is to
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`verify a registrant electronic contact (e.g., a telephone number), establish a
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`notification event associated with the registrant, identify an occurrence of the
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`established notification event, and, after identifying the occurrence of the
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`established notification event, re-verify the registrant electronic contact. EX 1001,
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`claim 1 (12:20-55). Claim 1 is directed to a verification and notification process.
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`B.
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`Summary of the Petition’s Deficiencies.
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`The Petition suffers from three main deficiencies focused on construing
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`claims incorrectly, misstating what the prior art teaches, and detrimentally relying
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`on a declaration that should not be accorded any weight.
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`The chief issue with the Petition’s claim interpretations is that they are
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`divorced from and even inconsistent with the specification. For example, the
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`petition reads “notification” out of the “notification event” claim terms such that
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`notification events do not have to actually provide for the notification of users.
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`That is inconsistent with the specification and the claims, where claim construction
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`should start, and which expressly recite a “verification and notification process.”3
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`Also, the Petition relies on a declaration entitled to little or no weight as evidence.
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`The Petition’s flawed claim constructions infect its prior-art analysis in that
`
`the Petition relies on art that doesn’t actually teach all claimed elements, including
`
`the establishing of such notification events (which provide for the registrant being
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`notified of the occurrence of such an event). The other most significant
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`shortcoming in the Petition’s obviousness analysis is that it reads out the “re” in
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`“re-verifying” the registrant electronic contact. Usernames, passwords, and other
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`provided information can initially establish user credentials and potential
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`registration information. Then, an electronic contact, such as a user’s phone
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`number, might be verified. The claims of the ’920 Patent recite aspects of a form
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`of initially verifying a registrant electronic contact (e.g., verifying a registrant’s
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`phone number). And Petitioner points to certain teachings in the prior art that it
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`believes teach such initial verification. But the claims also recite re-verifying after
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`3
` All emphasis in all quotations has been added unless indicated otherwise.
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`identifying the occurrence of particular events referred to as “notification events.”
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`Not only does the Petition wrongly regard any possible event as a notification
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`event, it improperly maps prior-art teachings of initial verification to the claimed
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`re-verification limitations, which require re-verifying a previously verified
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`registrant electronic contact.
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`When discussing the prior art, the Petition uses language of the claims
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`instead of language of the prior art itself. This would lead a casual observer to
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`think that the prior art teaches far more than it does. For example, when arguing
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`that the ’920 Patent should not be entitled to the priority date of an ultimate parent
`
`application, the Petition decisively proclaims “[t]he words “notification event”’
`
`does [sic] not appear in the ’421 application.” Petition at p. 8. Of course the ’421
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`Application contemplates events that lead to initial verifications, but the Petition is
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`trying to make the point that such general teachings do not disclose “notification
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`events” (nor re-verifications). Petition at pp. 8-9. However, none of the asserted
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`prior art uses the words “notification event.” And Bennett, for example, does not
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`teach the recited “notification events” or “re-verification,” but when discussing
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`Bennett, the Petition weaves in claim language as though it is present in the
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`reference when, in fact, it is not. The Petition improperly collapses re-verification
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`of a verified registrant electronic contact into initial verification of previously
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`provided information.
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`Finally, the expert declaration of Dr. Shamos is entitled to little or no
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`weight. The Shamos Declaration refuses to respect all claim limitations, including,
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`importantly, the notification-event limitations. For example, Dr. Shamos conveys
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`a fundamental misunderstanding of the invention, claim construction, and what
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`needs to be found in the prior art to support an obviousness finding by describing
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`the claims, in his opinion, as steps that “amount to nothing more than: receiving a
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`telephone number over the Internet; connecting to a telephone associated with the
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`telephone number to communicate a verification code; receiving a verification
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`code over an online form; comparing the received code with the communicated
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`code for a match; [and] upon identifying an event, repeating the process.” EX
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`1002 at ¶ 17. If that is his view, then his declaration should not be given any
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`weight, at least because it does not address all of the express elements in the
`
`claims.
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`IV. LEGAL STANDARDS
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`A.
`
`Standard for Granting Inter Partes Review
`
`Under 35 U.S.C. § 314(a), Congress limited the Board’s authority to
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`institute inter partes review only to those circumstances where “the information
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`presented in the petition … and any response … shows that there is a reasonable
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`likelihood that petitioner would prevail with respect to at least one of the claims
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`challenged in the petition.” See also 37 C.F.R. § 42.108(c). The petitioner has the
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`burden of showing that this statutory threshold has been met. See, e.g., Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,756 (Aug. 14, 2012) (“The
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`Board … may institute a trial where the petitioner establishes that the standards for
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`instituting the requested trial are met …”).
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`B.
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`Standard for Claim Construction in Inter Partes Review
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`During inter partes review, claims in an unexpired patent are given their
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`broadest reasonable interpretation (“BRI”). 37 C.F.R. § 42.100(b). The BRI is
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`informed by the specification. Id. “That is not to say, however, that the Board
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`may construe claims during IPR so broadly that its constructions are unreasonable
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`under general claim construction principles. As we have explained in other
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`contexts, the protocol of giving claims their broadest reasonable interpretation …
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`does not include giving claims a legally incorrect interpretation. … Rather, claims
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`should always be read in light of the specification and teachings in the underlying
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`patent. … Even under the broadest reasonable interpretation, the Board’s
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`construction cannot be divorced from the specification and the record evidence,
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`and must be consistent with the one that those skilled in the art would reach. A
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`construction that is unreasonably broad and which does not reasonably reflect the
`
`plain language and disclosure will not pass muster.” Microsoft Corp. v. Proxyconn,
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`Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (internal quotations and citations
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`omitted).
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`To the greatest degree possible, the claims are interpreted with reference to
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`intrinsic evidence. Phillips v. AWH Corp., 415 F.3d 1303, 1317-1318 (Fed. Cir.
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`2005). Extrinsic evidence may not be used to reach a claim construction
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`inconsistent with the intrinsic record. Id. at 1318; Vitrionics Corp., 90 F.3d at
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`1583-84; PPC Broadband, Inc. v. Corning Optical Communs. RF, LLC, No. 2015-
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`1364, 2016 U.S. App. LEXIS 3084, *6 (Fed. Cir. Feb. 22, 2016) (“The fact that
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`‘around’ has multiple dictionary meanings does not mean that all of these
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`meanings are reasonable interpretations in light of this specification.”).
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`While a declaration may be submitted in support of a petition for inter partes
`
`review, that testimony must “disclose the underlying facts or data” on which it is
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`based. 37 C.F.R. § 42.65(a). Otherwise, it “is entitled to little or no weight.” Id.;
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`see 37 C.F.R. § 42.100(a). A distinction must also be drawn between testimony on
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`the technology and testimony on the proper construction of a claim term.
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`Vitrionics Corp., 90 F.3d at 1585. Testimony regarding claim construction,
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`“whether it be of an attorney, a technical expert, or the inventor … may only be
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`relied upon if the patent documents, taken as a whole, are insufficient to enable the
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`court to construe disputed claim terms. Such instances will rarely, if ever, occur.”
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`Id.
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`The United States Supreme Court recently granted certiorari to consider
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`whether BRI is the proper standard for interpreting claims in granted patents
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`during inter partes review. Cuozzo Speed Technologies, LLC v. Lee, 793 F.3d
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`1268 (Fed. Cir. 2015), cert. granted, 577 U.S. _____ (Jan. 15, 2016) (No. 15-446).
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`The following claim-construction proposals are submitted with the understanding
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`that the Board will evaluate this case based on the BRI standard.
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`C.
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`Standard for Obviousness
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`The determination of whether a patent claim is obvious is an objective
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`analysis. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). “Under § 103,
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`the scope and content of the prior art are to be determined; differences between the
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`prior art and the claims at issue are to be ascertained; and the level of ordinary skill
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`in the pertinent art resolved. Against this background, the obviousness or
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`nonobviousness of the subject matter is determined.” Id. (citing Graham v. John
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`Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966)).
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`Even when the individual elements of a claim were known, the obviousness
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`inquiry requires a determination of “whether there was an apparent reason to
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`combine the known elements in the fashion claimed.” Id. at 418. This analysis is
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`important, “because inventions in most, if not all, instances rely upon building
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`blocks long since uncovered, and claimed discoveries almost of necessity will be
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`combinations of what, in some sense, is already known.” Id. at 418-19.
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`“Rejections on obviousness grounds cannot be sustained by mere conclusory
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`statements; instead, there must be some articulated reasoning with some rational
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`underpinning to support the legal conclusion of obviousness.” Id. at 418.
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`In determining the scope and content of the prior art, the “mere fact that a
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`certain thing may result from a given set of circumstances is not sufficient [to
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`establish inherency.]” In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (quoting
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`In re Oelrich, 666 F.2d 578, 581-82 (CCPA 1981)). Further, “[t]hat which may be
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`inherent is not necessarily known. Obviousness cannot be predicated on what is
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`unknown.” Id. (citing In re Spormann, 363 F.2d 444, 448 (CCPA 1966)).
`
`V. CLAIM CONSTRUCTION
`
`A.
`
`Summary
`
`The table below summarizes the parties’ positions regarding the proper
`
`construction of “notification event.”
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`Patent Owner’s Construction
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`Petitioner’s Construction
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`“notification event”
`
`an event that results in the registrant
`
`an event that results in the registrant
`
`being contacted either for re-
`
`being notified that the event occurred
`
`verification or for notification that
`
`the event occurred
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`Here, an appropriate construction for “notification event” is “an event that
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`results in the registrant being notified that the event occurred.”
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`B. A notification event ultimately leads to registrants being notified
`that the event occurred (if the event occurs).
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`The ‘920 Patent repeatedly explains that notification events are events that
`
`result in a registrant being notified of the occurrence thereof. Below are
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`illustrative, relevant citations:
`
`1. “Notification events are established, and the registrant is notified of
`
`the occurrence of a previously established notification event . . . .”
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`EX 1001 at Abstract.
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`2. “The present invention also relates to a process for notifying
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`registrants of predetermined events using information obtained
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`during the registration process.” EX 1001 at 1:10-13.
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`3. “For example, a consumer may wish to be notified every time a
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`withdrawal or [sic] more than one thousand dollars is requested …”.
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`EX 1001 at 1:42-44.
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`4. “A business may wish to notify a consumer when more than five
`
`transactions post to a consumer’s account within twenty-four hours.”
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`EX 1001 at 1:45-48.
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`5. “When credit cards, account numbers, and the like are stolen, these
`
`accounts are quickly drained of cash or credit over a short period of
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`time. This can be largely avoided by notifying the account owner of
`
`these acts …”. EX 1001 at 1:48-51.
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`6. “There is also a continuing need for a method to notify a registrant,
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`such as through the registrant’s telephone number, of events which are
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`established either by the individual registrant or the company through
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`which the registrant is conducting services.” EX 1001 at 1:64-2:1.
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`7. “The present invention resides in a process for verifying the identity
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`of a registrant, as well as using the registration information to notify
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`the registrant of events that are either established by the registrant or
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`the business through which the registrant has registered.” EX 1001 at
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`2:7-11.
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`8. “Upon the occurrence of a previously established notification event,
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`the registrant is notified …”. EX 1001 at 2:49-51.
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`9. “FIG. 9 is a flow chart depicting the steps taken in accordance with
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`the present invention for registering and verifying a registrant as a
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`prelude to notification; …”. EX 1001 at 3:42-44.
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`10. “[T]he present invention resides in a process for verifying the
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`identity of a registrant, and utilizing
`
`the verification and/or
`
`registration information to notify the registrant of predetermined
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`events established by either the registrant or the business.” EX 1001
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`at 3:54-58.
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`11. “The present invention not only provides a method of verifying a
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`potential registrant, such as through his or her telephone number by
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`establishing connection on-line with the registrant as well as via a
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`telephone connection, it is also designed and configured so as to
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`provide notifications, alerts, information, etc., …”. EX 1001 at 8:40-
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`45.
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`12. “Such numbers are stored in the user’s account (904), and can be
`
`used in the verification process, as well as an alert or notification
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`process, …”. EX 1001 at 8:56-58.
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`13. “Thus, when a consumer attempts to make certain transactions, as
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`specified by either the consumer or the business, the consumer may be
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`notified or alerted in a variety of way [sic].” EX 1001 at 10:44-47.
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`14. “For example, the consumer may wish to be notified every time a
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`withdrawal of more than one thousand dollars is requested from his or
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`her checking account.” EX 1001 at 10:60-62.
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`15. “Or, the business may wish to notify the consumer when more than
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`five transactions post to the consumer’s account within twenty-four
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`hours.” EX 1001 at 10:62-65.
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`16. “[A] consumer who is a parent may wish to be notified when the
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`consumer’s child makes a purchase or [sic] more than [an] amount
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`specified by the business or consumer.” EX 1001 at 10:67-11:3.
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`17. “The present invention is not limited to notifying a user of events
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`that occur with respect to a financial account.” EX 1001 at 11:11-12.
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`18. “A verification and notification process, …”. EX 1001 at cl. 1,
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`12:20.
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`19. “The process of claim 2 further comprising: notifying the registrant
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`of the occurrence of the established notification event by establishing
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`a telephonic connection with the registrant via a registrant electronic
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`contact.” EX 1001 at cl. 4, 12:61-65.
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`Thus, one of ordinary skill in the art, in view of the specification and claims,
`
`would understand that a notification event is “an event that results in the registrant
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`being notified that the event occurred.”
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`C.
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`Petitioner’s construction should not be adopted because it reads
`out “notification” from “notification event.”
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`Despite the excerpts above from the specification, the Petition equates
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`“notification event” with “event,” giving no weight to “notification.” Petitioner’s
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`construction would extend the scope of “notification event” to include any event
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`that results in the registrant being contacted for re-verification. Petition at p. 10
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`(“Thus, a ‘notification event’ does not necessarily result in notifying the registrant
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`of the occurrence; it may result in either reverification or notification.”) (emphasis
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`original). Divorced from the specification, Petitioner’s proposal is not what an
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`ordinary skilled artisan would understand “notification event” to mean. The claim
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`recites, and the specification describes, not merely an “event,” but a “notification
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`event.”
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`The Petition’s failure to address all the limitations of the claim language
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`cannot be viewed as mere oversight. Petitioner understands that every single
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`limitation in a claim lends importance to its meaning. For instance, at p. 20 of the
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`Petition, in discussing the primary reference relied upon in the proposed grounds
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`for rejection (Bennett (EX 1005)), Petitioner states that “Bennett’s ‘completion
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`code’ is” purportedly “a type of ‘verification code,’ because the code is used to
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`verify the registrant’s provided electronic contact.” Petition at p. 20.
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`However, when similarly discussing the term “notification event,” the
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`description is devoid of any statement similarly explaining why the events
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`described in Bennett are supposedly “notification events.” For instance, one would
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`expect a statement that indicated that these described events are “notification
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`events” because they are events that notify the user of something. The fact that a
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`statement in this regard is missing from the Petition (and the Shamos Declaration)
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`is illustrative of the simple fact that Bennett does not describe “notification events”
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`as the term is properly construed: “an event that results in the registrant being
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`notified that the event occurred.”
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`Petitioner proposes its claim-construction positions to try to force the art
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`within the scope of the claims. And as explained below, Petitioner’s position that a
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`notification event need not result in the user being notified of the occurrence of the
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`event should not properly be bolstered by the Shamos Declaration and is
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`inconsistent with the specification.
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`1.
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`The Shamos Declaration’s claim-construction comments
`should be given no weight.
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`Instead of properly starting with the claims or the specification to construe
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`“notification event,” the Petition cites directly to and detrimentally relies on the
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`Shamos Declaration. Petition at p. 9 (citing EX 1002 at ¶¶ 23-29). But the
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`Shamos Declaration does not address all the limitations of the claims and ignores
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`important aspects of the specification. Dr. Shamos is also an attorney, and his
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`declaration is more of any advocacy piece to support Petitioner’s positions than an
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`independent analysis and setting forth of technical facts. When convenient, the
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`declaration sometimes leaves out important information. At other times, the
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`declaration adds misleading and/or inappropriate information.
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`As mentioned at § III.B., above, Petitioner’s declaration states: “These steps
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`amount to nothing more than: receiving a telephone number over the Internet;
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`connecting to a telephone associated with the telephone number to communicate a
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`verification code; receiving a verification code over an online form; comparing the
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`received code with the communicated code for a match; [and] upon identifying an
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`event, repeating the process.” EX 1002 at ¶ 17. Establishing a notification event,
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`which is both expressly claimed and clearly explained in the specification, is
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`excluded from this summary. See, e.g., § V.B., above. Here, the declaration
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`leaves out important information. “All words in a claim must be considered in
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`judging the patentability of that claim against the prior art.” In re Wilson, 424 F.2d
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`1382, 1385 (CCPA 1970). Because the declaration does not address all claim
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`limitations, it cannot be used to assess the patentability of the claim. His attempt to
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`completely read out elements of the claims is particularly troubling given that Dr.
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`Shamos is a registered patent attorney, who should appreciate the significance of
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`all claim elements.
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`Later, the declaration misquotes the ‘920 specification. The declaration
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`alleges that the ‘920 Patent, at col. 9, lines 3-4 states: “If a previously established
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`notification event occurs, then the system will notify and/or verify the user.” EX
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`1002 at ¶ 28. But that’s not what the ‘920 Patent says. Dr. Shamos added the
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`word “notification.” The sentence says “events,” not “notification events”: “If a
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`previously established event occurs, then the system will notify and/or verify the
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`user.” EX 1001 at 9:3-4. Here, the declaration improperly adds critical
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`misinformation to advocate for a point, misquoting the ‘920 Patent.
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