`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________________________
`
`
`
`Twilio Inc.
`Petitioner
`
`v.
`
`TeleSign Corporation
`Patent Owner
`
`Patent No. 9,300,792
`(filed April 3, 2015, issued March 29, 2016)
`
`
`
`Title: REGISTRATION, VERIFICATION AND NOTIFICATION
`SYSTEM
`
`__________________________________________________
`
`Inter Partes Review No. IPR2016-01688
`
`_________________________________________________
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`8107716
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`Table of Contents
`
`1.
`
`2.
`
`Overview. ........................................................................................................ 1
`
`The ’792 Patent. .............................................................................................. 2
`
`2(A). Problems Addressed by the ‘792 Patent. ............................................... 3
`
`2(B). Solutions. ............................................................................................... 5
`
`3.
`
`Legal Authority ............................................................................................... 7
`
`3(A). That references merely could be combined is insufficient to
`show obviousness based on those references. ....................................... 7
`
`3(B). Hindsight is improper. ........................................................................... 8
`
`3(C). Failure to articulate an adequate obviousness rationale is
`reversible error. ................................................................................... 11
`
`3(D). In inter partes review, the Petitioner’s burden to show
`obviousness never shifts to the Patent Owner and the Petition
`must be complete. ................................................................................ 12
`
`3(E). In inter partes review, Patent Owner’s evidence is not
`evaluated merely for its “knockdown” ability; rather, it is to be
`laid alongside Petitioner’s and assessed in kind. ................................ 12
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Arguments herein are applicable to like elements in claims 1 and 10. ........ 14
`
`Acknowledgment of the Board’s claim construction of “notification event”
` ...................................................................................................................... 14
`
`Bennett does not teach the “notification event” limitations. ........................ 15
`
`First argument: The Petition fails to make out a prima facie case of
`obviousness because it does not show that the “action” limitations are taught
`in the prior art. .............................................................................................. 17
`
`Second argument: the Petition fails to make out a prima facie case of
`obviousness because it fails to show notification events “associated with
`actions that require user acknowledgement” is in the art of record. ............ 26
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`9.
`
`Third argument: The Petition fatally relies on Bennett alone to attempt to
`show the last element of claim 1, setting forth no argument at all that
`Campbell purportedly teaches “receiving, from the user, an
`acknowledgement of an action associated with the established notification
`event.” ........................................................................................................... 30
`
`9(A). Argument. ............................................................................................ 30
`
`9(B). Petitioner is not allowed to make additional arguments outside
`of the Petition to support its prima facie case. .................................... 31
`
`9(C). Additional arguments necessary to support Petitioner’s prima
`face case not in the Petition may not be set forth. ............................... 32
`
`10.
`
`Fourth Argument: Skilled artisans would not have been motivated to
`combine the teachings of Bennett and Campbell, and thus, Petitioner has
`failed to show that any notification-event limitation is taught. .................... 33
`
`Supplementing Bennett’s code message with Campbell’s
`10(A).
`contact instructions would expose users to security risks. .................. 33
`
`Bennett’s disclosure of “other information” in the
`10(B).
`message does not refer to a “word-based notification” having
`contact instructions. ............................................................................. 36
`
`is not properly
`Additional reasons why Campbell
`10(C).
`combinable with Bennett. .................................................................... 38
`
`11. Conclusion. ................................................................................................... 40
`
`
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`Patent Owner’s Updated List of Exhibits:
`
`Document
`
`BBC News Article, “Tinder accounts spammed by bots
`masquerading as singles”,
`http://www.bbc.com/news/26850761, last accessed Nov.
`29, 2016.
`
`Technology Review Article, “Fake Persuaders”,
`https://www.technologyreview.com/s/535901/fake-
`persuaders/, last accessed Nov. 29, 2016.
`
`Certified copy of the file wrapper and contents of the
`application (14/678,815) leading to U.S. Patent No.
`9,300,792.
`
`Decision denying institution for IPR2016-00451.
`
`Decision denying institution for IPR2016-00450.
`
`“Security Engineering” by Ross Anderson, Second
`Edition, 2008.
`
`Bruce Schneier, Crypto-gram, October 15, 2000.
`
`Declaration or Dr. Seth Nielson
`
`C.V. of Dr. Seth Nielson
`
`List of Materials Considered by Dr. Seth Nielson
`
`Exhibit
`
`Number
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`
`
`
`
`
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`EMPHASIS IN QUOTATIONS
`
`Unless otherwise indicated, any and all emphasis (italics, underlining,
`
`bolding) appearing in all quotations herein has been added. For readability
`
`(reducing parenthetical notices), this is not always indicated.
`
`
`
`“Teach” means “teach or suggest.”
`
`Patent Owner’s usage of “teach” herein means “teach or suggest,” which is
`
`generally abbreviated to just “teach” for readability.
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`1. Overview.
`
`The challenged claims recite a notification event associated with “an action”
`
`that
`
`“requires”
`
`acknowledgement by
`
`the user
`
`(and
`
`receiving
`
`such
`
`acknowledgement). Not all events require acknowledgment by users even if the
`
`user is notified of them. Notifying a user of a stock update, for example, is not
`
`associated with an action that requires user acknowledgement. The Board has
`
`determined on more than one occasion that Bennett does not teach the recited
`
`“notification event” limitations of the claims. The last element of claim 1 is a
`
`notification-event
`
`limitation,
`
`reciting
`
`“receiving,
`
`from
`
`the user,
`
`an
`
`acknowledgement of an action associated with the established notification event.”
`
`The Petition does not argue that Campbell teaches this element—it relies on
`
`Bennett alone. TeleSign’s claims should not be found unpatentable because:
`
`1. the Petition fails to substantively analyze the “action” limitations and
`
`show that they are taught in the prior art (rather, it focuses only on
`
`“notification events”);
`
`2. the Petition fails to distinguish notification events that are associated
`
`with actions that require user acknowledgement from those that do
`
`not;
`
`3. the Petition fatally relies on Bennett alone to show the last element of
`
`claim 1, a notification-event limitation, setting forth no argument at all
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`that Campbell purportedly teaches “receiving, from the user, an
`
`acknowledgement of an action associated with the established
`
`notification event”;
`
`4. Petitioner is not allowed to make additional arguments outside of the
`
`Petition to support its prima facie case;
`
`5. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir.
`
`2016), for example, discharges responsibility from and even prevents
`
`the Board from setting forth additional arguments that are not in the
`
`Petition; and
`
`6. skilled artisans would not have been motivated to combine the
`
`teachings of Bennett and Campbell, and thus, Petitioner has failed to
`
`show that any notification-event limitation is taught.
`
`2.
`
`The ’792 Patent.
`
`The ’792 patent describes preventing fraudulent, fake online registrations by,
`
`among other things, first verifying a potential registrant’s submitted information.
`
`Thus, claim 1 recites “completing” a registration of users based on information
`
`received from a user and on a verification of a telephone number by a verification
`
`process. Fraudsters attempt to commit fraud online when they try to create online
`
`accounts using false information for their advantage. This sort of fraud “can
`
`compromise the intended purpose of the registration, create a breach of security
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`and constitute fraud on the web-site owners.” Ex. 1001 at 1:58-60. It includes
`
`attempting to obtain access to an existing account or other information that the
`
`fraudster is not authorized to access.
`
`Fraudsters also try to commit fraud by portraying themselves as legitimate
`
`users. They may try to, for example, withdraw large sums of money or charge
`
`expensive items to credit cards. The ’792 patent also, among other things,
`
`describes and claims transmitting messages to legitimate users upon the occurrence
`
`of notification events. The invention maintains a record of notification events that
`
`are associated with actions that require acknowledgement by the user. It is these
`
`actions that require acknowledgement by the user.
`
`2(A). Problems Addressed by the ‘792 Patent.
`
`The ’792 patent addresses a multifaceted problem:
`
`1. in an online environment, potential registrants often register using
`
`false information;1
`
`2. permitting fraudulent online registrations can create a breach of
`
`security;2
`
`3. security measures need to be rapidly and reliably deployed while still
`
`providing “an additional layer of security”3; and
`
`
`1 Ex. 1001 at 1:56-58.
`
`2 Ex. 1001 at 1:58-60.
`
`3 Ex. 1001 at 8:45-47; 2:17-25.
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`4. legitimate users do not learn about unauthorized activity or attempted
`
`activity soon enough to address it.4
`
`These problems are rooted in computer technology. Brick-and-mortar stores
`
`allow for face-to-face interactions. Online presences do not. Thus, determining
`
`whether remotely provided digital information over the Internet is accurate was
`
`(and is) a problem—a significant technological problem. As mentioned, a key
`
`aspect of fraud explained in the specification relates to identifying potentially
`
`fraudulent website registrations.5
`
`The problem stems from the rise of the Internet and the anonymity of
`
`communicating via remote network connections. Parties exchange data online
`
`without being physically present. Information is received electronically. Users
`
`desire to create online registrations. But users can provide false registration
`
`information.6 And allowing fraudulent (or fake) registrations could “compromise
`
`
`4 Ex. 1001 at 1:61-2:8.
`
`5 The title of the patent includes “Registration.” The specification (including
`
`claims and references to prior applications) refers to some form of “registration,”
`
`“registrant,” “register” or the like 326 times (a word search of “regist” yields 326
`
`hits). Both independent claims recite “completing a registration of the user based
`
`on” recited information. Ex. 1001 at claims 1 and 10.
`
`6 Ex. 1001 at 1:56-58; Ex. 2001 at 5 (Social media website Facebook, for
`
`example, may have over 14 million accounts that are “fakes created for spam” or
`
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`the intended purpose of the registration” and lead to security breaches. Ex. 1001 at
`
`1:58-60. But then again, attempting to separate legitimate requests from fraudulent
`
`attempts could take so long that it is not practical. For legitimate users, the
`
`problem of notifying them of unauthorized activity or attempted activity (such as
`
`altering account information)7 in time for it to be addressed existed.
`
`As reflected in more modern literature and consistent with the specification
`
`of the ’792 patent: “Fake accounts operated by low-paid humans or automated
`
`software have become good business, too. They are used to inflate follower counts,
`
`to push spam or malware, and even to skew political discourse. The tactic appears
`
`to be pervasive and growing in sophistication.” Ex. 2002 at 1.
`
`2(B). Solutions.
`
`The
`
`inventors addressed
`
`the
`
`technological problems above with
`
`technological solutions. The ’792 patent contemplates a computing system that
`
`employs software to implement or perform a “verification and notification
`
`method.”8 Ex. 1001 at claims 1 and 10. The solution, as a whole, reduces
`
`fraudulent online registrations in a rapid manner using a combination of hardware
`
`
`other undesired purposes.).
`
` Ex. 1001 at 3:2-3.
`
` 7
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`and software to provide a verification and notification method implemented by a
`
`computing system that helps verify the accuracy of registration information—
`
`completing a registration based on a verified telephone number. Id. at Abstract,
`
`2:29-41, 5:3-7, 12:41-13:2, 13:23-14:17.
`
`Information is received from a user via a computing interface (such as an
`
`online web registration form) presented to the user attempting to access a service.
`
`Id. at 2:42-43, 4:51-55, 5:28-29, 5:57-60, 6:27-29, 7:9-13, 7:47-51, 8:8-12, 9:7-9,
`
`12:43-46, 13:27-30. The received information can include a telephone number
`
`associated with the user. Id. at 4:55-58, 5:28-29, 6:27-29, 7:9-13, 9:9-13, 12:45-
`
`46, 13:29-30. The telephone number is verified; for example, using a verification
`
`code sent in real time to the user, such as via SMS. Id. at Abstract, 7:15-18, 9:25-
`
`28, 9:33-35. A verification code submitted by the user is received via the
`
`computing interface. Id. at 4:63-65; 12:52-53, 13:36-37. The telephone number is
`
`deemed verified if the submitted verification code is the same as the communicated
`
`verification code. Id. at 7:1-7, 12:54-53, 14:1-3.
`
`Registration of the user is completed based on the received information and
`
`verified telephone number, which enables the user to access the service the user
`
`was attempting to access. Id. at Abstract, 9:37-43, 12:57-60, 14:4-7. A record of
`
`notification events is maintained. Id. at Abstract, 2:66-3:3, 12:61-63, 14:8-10. The
`
`notification events are associated with actions that must be acknowledged by the
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`user. Id. at Abstract, 1:65-67; 2:3-8, 10:66-11:4, 11:16-18, 12:61-63, 14:8-10.
`
`When an indication is received that a notification event has occurred, a message
`
`indicating the occurrence of the notification event is transmitted. Id. at Abstract,
`
`3:4-10, 10:2-4; 12:64-67, 14:11-14. An acknowledgement of an action associated
`
`with the notification event is received from the user. Id. at Abstract, 13:1-2, 14:14-
`
`15. This user acknowledgement allows a transaction to occur. Id. at Abstract,
`
`1:65-67; 2:3-8, 10:66-11:10, 11:16-18.
`
`3.
`
`Legal Authority
`
`3(A). That references merely could be combined is insufficient to show
`obviousness based on those references.
`
`Merely determining that two references could be combined is insufficient to
`
`support an obviousness finding: “[T]hat reasoning seems to say no more than that a
`
`skilled artisan, once presented with the two references, would have understood that
`
`they could be combined. And that is not enough: it does not imply a motivation to
`
`pick out those two references and combine them to arrive at the claimed
`
`invention.”9 The Federal Circuit has consistently rejected testimony directed to
`
`whether references could be combined: “Dr. Yanco’s testimony primarily
`
`consisted of conclusory references to her belief that one of ordinary skill in the art
`
`
`9 PersonalWeb Techs., LLC v. Apple, Inc., 848 F.3d 987, 2017 U.S. App.
`
`LEXIS 2544, *14 (Fed. Cir. Feb. 14, 2017) (citation omitted) (italics in original).
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`could combine these references, not that they would have been motivated to do
`
`so.”10 “[T]he expert’s testimony on obviousness was essentially a conclusory
`
`statement that a person of ordinary skill in the art would have known, based on the
`
`‘modular’ nature of the claimed components, how to combine any of a number of
`
`references to achieve the claimed inventions. This is not sufficient and is fraught
`
`with hindsight bias.”11 Expert testimony is also deficient if it “fails to explain why
`
`a person of ordinary skill in the art would have combined elements from specific
`
`references in the way the claimed invention does.”12
`
`3(B). Hindsight is improper.
`
`“Among the difficult challenges of applying the doctrine of obviousness is
`
`avoidance of even a hint of hindsight. Obviousness cannot be based on the
`
`hindsight combination of components selectively culled from the prior art to fit the
`
`parameters of the patented invention.”13 “Without any explanation as to how or
`
`
`10 InTouch Techs., Inc. v. VGo Communs., Inc., 751 F.3d 1327, 1352 (Fed.
`
`Cir. 2014) (italics in original).
`
`11 ActiveVideo Networks, Inc. v. Verizon Commc'ns, Inc., 694 F.3d 1312,
`
`1327 (Fed. Cir. 2012) (citation omitted).
`
`12 ActiveVideo Networks, Inc., 694 F.3d at 1328 (citation omitted) (italics in
`
`original).
`
`13 Cheese Sys. v. Tetra Pak Cheese & Powder Sys., 725 F.3d 1341, 1352
`
`(Fed. Cir. 2013) (quotation omitted).
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`why the references would be combined to arrive at the claimed invention, we are
`
`left with only hindsight bias that KSR warns against.”14
`
`“Absent some articulated rationale, a finding that a combination of prior art
`
`would have been ‘common sense’ or ‘intuitive’ is no different than merely stating
`
`the combination ‘would have been obvious.’ Such a conclusory assertion with no
`
`explanation is inadequate to support a finding that there would have been a
`
`motivation to combine. This type of finding, without more, tracks the ex post
`
`reasoning KSR warned of and fails to identify any actual reason why a skilled
`
`artisan would have combined the elements in the manner claimed.”15
`
`“The inventor’s own path itself never leads to a conclusion of obviousness;
`
`that is hindsight.”16 “[T]he path that leads an inventor to the invention is expressly
`
`made irrelevant to patentability by statute.”17 The statute says: “Patentability shall
`
`not be negatived by the manner in which the invention was made.”18 “Defining the
`
`problem in terms of its solution reveals improper hindsight in the selection of the
`
`
`14 Metalcraft of Mayville, Inc. v. Toro Co., 848 F.3d 1358, 2017 U.S. App.
`
`LEXIS 2719, *13 (Fed. Cir. Feb. 16, 2017) (citation omitted).
`
`15 In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017) (citation omitted).
`
`16 Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012).
`
`17 Otsuka Pharmaceutical Co., 678 F.3d at 1296 (quotation omitted)
`
`(referring to 35 U.S.C. § 103(a)).
`
`18 35 U.S.C. § 103(a) (pre- and post-AIA).
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`prior art relevant to obviousness…[because] [o]ften the inventive contribution lies
`
`in defining the problem in a new revelatory way.”19 The Federal Circuit has
`
`warned of hindsight where “it appear[ed] that the expert relied on the…patent itself
`
`as her roadmap” because that would amount “to fall[ing] victim to the insidious
`
`effect of a hindsight syndrome wherein that which only the inventor taught is used
`
`against its teacher.”20
`
`One form of improper hindsight is analyzing what merely could have been
`
`done, as discussed above. “[T]he expert’s testimony on obviousness was
`
`essentially a conclusory statement that a person of ordinary skill in the art would
`
`have known…how to combine any of a number of references to achieve the
`
`claimed inventions. This is not sufficient and is fraught with hindsight bias.”21
`
`“[W]e cannot allow hindsight bias to be the thread that stitches together prior art
`
`patches into something that is the claimed invention”.22
`
`
`19 Insite Vision, Inc. v. Sandoz, Inc., 783 F.3d 853, 859 (Fed. Cir. 2015)
`
`(quotations omitted).
`
`20 Zoltek Corp. v. United States, 815 F.3d 1302, 1313 (Fed. Cir. 2016)
`
`(citations omitted).
`
`21 InTouch Technologies, Inc., 751 F.3d at 1352 (quoting ActiveVideo
`
`Networks, Inc., 694 F.3d at 1327).
`
`22 Metalcraft of Mayville, Inc. v. Toro Co., 2017 U.S. App. LEXIS 2719, *14
`
`(citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419, 421 (2007)).
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`3(C). Failure to articulate an adequate obviousness rationale is
`reversible error.
`
`The Board must make a finding regarding motivation to combine prior art
`
`references when it is disputed (as it is here).23 The Board “must articulate a reason
`
`why a PHOSITA would combine the prior art references.”24 The reasoning must
`
`include an “adequate evidentiary basis” and “a satisfactory explanation . . .
`
`including a rational connection between the facts found and the choice made.”25
`
`Failure to articulate logical and rational reasons for a decision is reversible error.26
`
`“[T]he PTAB’s motivation to combine ‘analysis should be made explicit’”.27
`
`“[K]nowledge of a problem and motivation to solve it are entirely different from
`
`motivation to combine particular references to reach the particular claimed
`
`method.”28
`
`
`23 In re: Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016).
`
`24 In re Nuvasive, Inc., 842 F.3d 1376 (emphasis in original).
`
`25 In re Nuvasive, Inc., 842 F.3d at 1382 (citing In re Lee, 277 F.2d 1338,
`
`1344 (Fed. Cir. 2002); Motor Vehicle Mfrs. Ass’n v. State Farm Mut. Auto. Ins.
`
`Co., 463 U.S. 29, 43 (1983); Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d
`
`1309, 1322 (Fed. Cir. 2016)) (internal quotations omitted).
`
`26 See generally, In re Nuvasive, Inc., 842 F.3d at 1382–85.
`
`27 In re Nuvasive, Inc., 842 F.3d at 1382 (Fed. Cir. 2016) (quoting KSR
`
`Intern. Co., 550 U.S. at 418).
`
`28 Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008)
`
`
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`3(D). In inter partes review, the Petitioner’s burden to show obviousness
`never shifts to the Patent Owner and the Petition must be
`complete.
`
`“In an inter partes review, the burden of persuasion is on the petitioner to
`
`prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e),
`
`and that burden never shifts to the patentee.”29 The burdens of persuasion and
`
`production never shift to the Patent Owner during an obviousness challenge.30 “It
`
`is of the utmost importance that petitioners in the IPR proceedings adhere to the
`
`requirement that the initial petition identify ‘with particularity’ the ‘evidence that
`
`supports the grounds for the challenge to each claim.’”31
`
`3(E). In inter partes review, Patent Owner’s evidence is not evaluated
`merely for its “knockdown” ability; rather, it is to be laid
`alongside Petitioner’s and assessed in kind.
`
`When evaluating Patent Owner’s evidence of nonobviousness used to rebut
`
`
`(citation omitted).
`
`29 In re Magnum Oil Tools International, Ltd., 829 F.3d at 1375 (citation
`
`omitted).
`
`30 In re Magnum Oil Tools International, Ltd., 829 F.3d at 1376 (“Where, as
`
`here, the only question presented is whether due consideration of the four Graham
`
`factors renders a claim or claims obvious, no burden shifts from the patent
`
`challenger to the patentee… We thus disagree with the PTO’s position that the
`
`burden of production shifts to the patentee…”).
`
`31 Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359,
`
`1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)).
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`Petitioner’s evidence supporting its case of obviousness, the Board is to consider
`
`all evidence together to determine whether a prima facie case of obviousness has
`
`been made by the Petitioner. The Federal Circuit has held that rebuttal evidence
`
`produced by the Patent Owner is evaluated, and if it is of “adequate weight,” any
`
`finding of prima facie obviousness is “dissipated.”32 The same court, citing from
`
`an earlier Federal Circuit case, stated
`
`that “The objective evidence of
`
`unobviousness is not evaluated for its ‘separate knockdown ability’ against the
`
`‘stonewall’ of the prima facie case…but is considered together with all other
`
`evidence, in determining whether the invention as a whole would have been
`
`obvious to a person of ordinary skill in the field of the invention.”33 Importantly,
`
`when a conclusion as to obviousness has previously been made and rebuttal
`
`evidence is produced by the Patent Owner, the facts from both the Petitioner and
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`the Patent Owner should be laid alongside each other for evaluation, without
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`
`32 Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc.,
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`98 F.3d 1563, 1570 (Fed. Cir. 1996) (quoting In re Piasecki, 745 F.2d 1468 (Fed.
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`Cir. 1984) “[T]he determination of obviousness, vel non, requires that all the
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`evidence be considered together… if rebuttal evidence of adequate weight is
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`produced, the holding of prima facie obviousness, being but a legal inference from
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`previously uncontradicted evidence, is dissipated.”)
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`33 Applied Materials, Inc., 98 F.3d at 1570 (citing In re Rinehart, 531 F.2d
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`1048, 1052 (C.C.P.A. 1976)).
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`consideration of the previous conclusion. In this regard, the Federal Circuit stated
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`that “Prima facie obviousness is a legal conclusion, not a fact. Facts established by
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`rebuttal evidence must be evaluated along with the facts on which the earlier
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`conclusion was reached, not against the conclusion itself.”34
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`4.
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`Arguments herein are applicable to like elements in claims 1 and 10.
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`The wording of claim elements 1[d], 1[e], and 1[f] (“maintaining,” “upon
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`receiving,” and “receiving”) is the same as the last three elements of claim 10.
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`Thus, all arguments and evidence herein directed to the elements of claim 1 apply
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`with equal force to those of claim 10, but for readability and brevity, such
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`duplicate references are not repeated throughout this document. In short, all
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`references to claim 1 herein are also to claim 10.
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`5.
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`Acknowledgment of the Board’s claim construction of “notification
`event”
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`The Institution Decision again construes “notification event” as being “an
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`34 In re Rinehart, 531 F.2d 1048, 1052 (C.C.P.A. 1976) (The court also
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`stating that “When prima facie obviousness is established and evidence is
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`submitted in rebuttal, the decision-maker must start over.... An earlier decision
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`should not, as it was here, be considered as set in concrete, and applicant's rebuttal
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`evidence then be evaluated only on its knockdown ability. Analytical fixation on
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`an earlier decision can tend to provide that decision with an undeservedly
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`broadened umbrella effect.).
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`event that results in the user being notified that the event occurred.” Dec. at 10.
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`The Board construed “notification event” in the same way in its two prior
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`Decisions denying institution of inter partes review of related cases.35 See Ex.
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`2004, pp. 7-11 and Ex. 2005, pp. 7-11. Thus, in three decisions, for purposes of
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`inter partes review, the Board has construed “notification event” the same way.
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`Dec. at 6-7, 10.
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`Patent Owner’s analysis herein applies that construction. If this construction
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`changes, Patent Owner would require notice and an adequate opportunity to
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`substantively address the issues associated with a changed construction to avoid a
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`due-process violation.
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`6.
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`Bennett does not teach the “notification event” limitations.
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`Even in the related IPRs, the Board made clear that Bennett does not teach a
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`“notification event,” and even stated that Dr. Shamos’ testimony is “incorrect”
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`when Dr. Shamos quotes the text of Bennett as stating that the user is notified
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`and/or verified by the system when a previously established notification event
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`occurs. See, e.g., Ex. 2004, p. 10.
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`Bennett does not expressly or inherently disclose the “notification event”
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`35 See IPR2016-00451 (Paper 17) and IPR2016-00450 (Paper 17).
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`limitations of the claims. Bennett’s completion code is not sufficient.36 Patent
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`Owner has explained this in its Preliminary Response in this case and in the
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`aforementioned two related IPRs.37
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`As confirmed by the Board: “based on the current record, we are not
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`persuaded that Bennett discloses, expressly or inherently, the ‘notification event’
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`limitations of the claims.” Dec. at 17 (further noting that the “Board similarly
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`found in related Cases IPR2016-00450 and IPR2016-00451 that Petitioner had not
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`shown that Bennett discloses “notification events.”). The “notification event
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`limitations” including the following (which are not taught by Bennett):
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`• “maintaining a record of one or more notification events associated
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`with actions that require acknowledgement by the user”;38
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`• “upon receiving an indication of an occurrence of an established
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`notification event, transmitting a message addressed to the verified
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`telephone number indicating the occurrence of the notification
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`36 Dec. at 17.
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`37 POPR at § 5(D) and § 7 (including § 7(C)). See also, IPR2016-00451,
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`POPR (Paper 7) at V(B), V(C), VI(A)(3), and VI(A)(4) and IPR2016-00450,
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`POPR (Paper 7) at V(B), V(C), VI(A)(3), and VI(A)(4)).
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`38 Ex. 1001 at 12:61-63 and 14:8-10.
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`event”;39
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`• “receiving, from the user, an acknowledgement of an action
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`associated with the established notification event”;40 and
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`• dependent claims that recite a “notification event” limitation.
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`7.
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`First argument: The Petition fails to make out a prima facie case of
`obviousness because it does not show that the “action” limitations are
`taught in the prior art.
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`The claims recite at least two “action” limitations, in elements 1[d] and 1[f],
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`as shown below.
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`Element 1[d]
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`Element 1[f]
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`
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`“maintaining a record of one or more notification events
`associated with actions that require acknowledgement by the
`user.
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`“receiving, from the user, an acknowledgement of an action
`associated with the established notification event.”
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`The Petition essentially collapses the recited “action” with a notification-
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`event itself. It substantively ignores the “associated with [actions]” requirement
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`and detrimentally focuses only on purported notification events. The Petition
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`misses the mark by attempting to show acknowledgment of the notification events
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`themselves rather than of the recited “actions” associated with notification events,
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`which the claims require. Dr. Nielson confirms that Dr. Shamos similarly
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`39 Ex. 1001 at 12:64-67 and 14:11-14.
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`40 Ex. 1001 at 13:1-2 and 14:14-16.
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`repeatedly ignores the “associated with [actions]” requirement of the claims. Ex.
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`2008 at 9.1-9.4.
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`As a preliminary matter, the Petition fails to show that Bennett discloses the
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`notification-event limitations of claim 1. See Section 6. Thus, Bennett does not
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`disclose maintaining a record of such “actions” associated with “notification
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`events,” because Bennett does not disclose the recited notification events. An
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`aspect of the notification-event limitations is that the notification-event limitations
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`are associated with actions that require acknowledgment (element 1[d]) (which
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`acknowledgement is received in step 1[f]). The recited notification event and
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`action are separately recited and different from each other.
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`Despite its assertion, the Petition does not show that “Campbell teaches
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`‘notification events associated with actions requiring acknowledgment by the
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`user.’” Pet. 44. It merely parrots the claim language. At be