Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 9
`Entered: November 8, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00811
`Patent 8,856,539 B2
`____________
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`Tel: 571-272-7822
`
`Paper 9
`Entered: November 8, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00811
`Patent 8,856,539 B2
`____________
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`Case IPR2018-00811
`Patent 8,856,539 B2
`
`
`INTRODUCTION
`I.
`Petitioner, Apple Inc., filed a Petition (Paper 3, “Pet.”) requesting
`inter partes review of claims 1–3, 5–8, 12, 16–24, 26–31, 34, 37, and 38
`(“the challenged claims”) of U.S. Patent No. 8,856,539 B2 (Ex. 1001, “the
`’539 patent”). Patent Owner, Universal Secure Registry, LLC, timely filed a
`Preliminary Response. Paper 8 (“Prelim. Resp.”). Pursuant to 35 U.S.C.
`§ 314 and 37 C.F.R. § 42.4(a), we have authority to determine whether to
`institute review.
`An inter partes review may not be instituted unless “the information
`presented in the petition . . . and any response . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the
`reasons set forth below, we conclude that Petitioner has not shown a
`reasonable likelihood it would prevail in establishing the unpatentability of
`the challenged claims. We, therefore, do not institute inter partes review of
`the ’539 patent in this proceeding.
`
`A. RELATED MATTERS
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies various
`judicial or administrative matters that would affect or be affected by a
`decision in this proceeding. Pet. 3–4; Paper 7, 2 (Patent Owner’s Updated
`Mandatory Notices).
`
`B. THE ’539 PATENT
`The ’539 patent is titled “Universal Secure Registry” and describes “a
`universal identification system . . . used to selectively provide personal,
`financial or other information about a person to authorized users.” Ex. 1001,
`
`2
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`Case IPR2018-00811
`Patent 8,856,539 B2
`
`[54], 3:5–9. The ’539 patent discloses that secure registry system may
`include “[a] multicharacter public code . . . which the system can map to
`provide permit delivery of items, complete telephone calls and perform other
`functions for entities. The system may also be utilized to locate an individual
`based on limited biological data.” Id. at [57].
`The challenged patent describes a secure database called a “Universal
`Secure Registry,” which can be used as “a universal identification system”
`and/or “to selectively provide information about a person to authorized
`users.” Id. at 3:5–9. The ’539 patent states that the USR database is designed
`to “take the place of multiple conventional forms of identification.” Id. at
`3:22–24. According to ’539 patent, “the USR system may enable the user’s
`identity to be confirmed or verified without providing any identifying
`information about the person to the entity requiring identification.” Id. at
`3:25–27.
`
`C. CHALLENGED CLAIMS
`Challenged claims 1, 22, 37, and 38 are independent. Claim 1 is
`illustrative of the claimed subject matter and is reproduced below:
`1. A secure registry system for providing information to a
`provider to enable transactions between the provider and
`entities with secure data stored in the secure registry
`system, the secure registry system comprising:
`[a] a database including secure data for each entity, wherein
`each entity is associated with a time-varying
`multicharacter code for each entity having secure data in
`the secure registry system, respectively, each time-
`varying multicharacter code representing an identity of
`one of the respective entities; and
`a processor configured
`
`3
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`Case IPR2018-00811
`Patent 8,856,539 B2
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`
`[b] to receive a transaction request including at least the
`time-varying multicharacter code for the entity on
`whose behalf a transaction is to be performed and an
`indication of the provider requesting the transaction,
`[c] to map the time-varying multicharacter code to the
`identity of the entity using the time-varying
`multicharacter code,
`[d] to execute a restriction mechanism to determine
`compliance with any access restrictions for the
`provider to secure data of the entity for completing
`the transaction based at least in part on the indication
`of the provider and the time-varying multicharacter
`code of the transaction request, and to allow or not
`allow access to the secure data associated with the
`entity including information required to enable the
`transaction based on the determined compliance with
`any access restrictions for the provider, the
`information including account identifying
`information,
`[e] wherein the account identifying information is not
`provided to the provider and the account identifying
`information is provided to a third party to enable or
`deny the transaction with the provider without
`providing the account identifying information to the
`provider.
`Ex. 1001, 18:29–60.1
`
`D. PROPOSED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability:
`
`
`1 We add formatting and square-bracketed annotations to separate claim
`limitations as identified by the parties. Our formatting and annotations
`imply no functional or structural aspect of the claim beyond identifying
`limitations for discussion.
`
`4
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`Case IPR2018-00811
`Patent 8,856,539 B2
`
`
`Reference(s) Claims
`Basis
`§ 102(a) Schutzer2
`1–3, 5–8, 16–24, 26–30, 37, and 38
`12, 31, and 34
`§ 103(a) Schutzer
`
`Pet. 24, 63. Petitioner also relies on the Declaration of Dr. Victor Shoup
`(Ex. 1002). Pet. 6.
`
`II. DISCUSSION
`A. CLAIM CONSTRUCTION
`In an inter partes review, the Board interprets claims of an unexpired
`patent using the broadest-reasonable construction in light of the specification
`of the patent. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2144–46 (2016). Under that standard, we generally give a claim
`term its “ordinary and customary meaning,” which is “the meaning that the
`term would have to a person of ordinary skill in the art in question” at the
`time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007). The specification may impose a specialized meaning,
`departing from the ordinary and customary meaning, by defining a term with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994). Further, a party may prove “the existence of a
`‘clear and unmistakable’ disclaimer” that narrowed a term’s definition in the
`prosecution history of a challenged patent. Trivascular, Inc. v. Samuels, 812
`
`
`2 European Patent Application Publication No. EP 1028401, published
`August 16, 2000, filed February 10, 2000 (Ex. 1030), and claiming priority
`to two provisional applications: 60/119818 (filed February 2, 1999); and
`60/144927 (filed July 21, 1999).
`
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`Case IPR2018-00811
`Patent 8,856,539 B2
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`F.3d 1056, 1063–64 (Fed. Cir. 2016) (quoting Elbex Video, Ltd. v.
`Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007)).
`Petitioner proposes constructions for several terms in the ’539 patent:
`“provider,” “entity,” and “time-varying multicharacter code, “indication of
`the provider,” “account identifying information,” “biometric information,”
`and “secure registry.” Pet. 13–22. Patent Owner proposes a construction for
`one term: “third party.” Prelim. Resp. 21–24.
`The parties dispute whether “third party” may include the secure
`registry itself. Patent Owner argues that a third party is “a party that is not
`the secure registry itself, the user, or the provider.” Prelim. Resp. 45.
`Petitioner argues that, in Schutzer, “[t]he issuing bank 8 is a third party
`because the user and the merchant make up a first and second party.” Pet. 37
`n.4. Patent Owner argues that Petitioner’s definition improperly treats
`Schutzer’s issuing bank as both the secure registry and the third party.
`Prelim. Resp. 45.
`The term “third party” appears only in the claims, not elsewhere in the
`Specification. Patent Owner relies on the fact that the claims recite “third
`party” separately from “a secure registry,” “a provider,” and “an entity.”
`Prelim. Resp. 22. Patent Owner also points out that the Specification
`describes “how the secure registry accesses and then transmits the user’s
`credit card or bank account number to the credit card company (CCC) or
`bank, respectively.” Id. at 22–23 (citing Ex. 1001, 11:61–65; 12:29–31;
`13:3–7; Fig. 7 (708); Fig. 8 (808); Fig. 9 (908)).
`We agree the claim language supports that the third party must be
`different from the “provider” and “entity.” As to the secure registry itself,
`we agree further with Patent Owner that the claim language mandates that
`
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`Case IPR2018-00811
`Patent 8,856,539 B2
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`the “third party” cannot be the secure registry system. The claims recite that
`the secure-registry processor is configured such that “account identifying
`information is provided to a third party.” By using “provided,” the claims
`instruct that the secure registry must send account-identifying information
`somewhere, not simply perform an additional operation on the information.3
`No further construction is required for purposes of this decision.
`We conclude that there is no need to construe any other term to
`resolve the issues in this Decision. See Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`B. ANTICIPATION BY SCHUTZER
`Petitioner asserts claims 1–3, 5–8, 16–24, 26–30, 37, and 38 are
`anticipated by Schutzer. Pet. 24–63. Patent Owner challenges Petitioner’s
`assertions in several regards, though we focus on one, which applies to all
`challenged claims.
`Schutzer discloses an invention for performing bankcard transactions
`in which a cardholder can generate alternate card numbers for individual
`transactions such that users provide the alternate card numbers to a
`merchant. Ex. 1030, (57). Using the alternate card number, the merchant’s
`bank submits a transaction to the issuing bank (the cardholder’s bank),
`which authenticates the cardholder and returns an authorization to the
`merchant’s bank. Id. ¶¶ 31–32.
`
`
`3 This restriction appears either as a capability of the processor (claims 1, 37,
`and 38) or as a separate step of the claimed method (claim 22)
`
`7
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`Case IPR2018-00811
`Patent 8,856,539 B2
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`Petitioner asserts that Schutzer’s “issuing bank server” is the claimed
`secure registry. Pet. 25 (“The ‘issuing bank server’ disclosed in Schutzer is a
`database with access restrictions, and therefore is the claimed ‘secure
`registry.’”). Schutzer depicts that server as comprising several functions,
`including an authenticator, number generator, and authorization processor.
`Ex. 1030, Fig. 1. Petitioner asserts that Schutzer discloses that “the account
`identifying information is not provided to the provider and . . . is provided to
`a third party” because the “alternate card number generator 24 . . . sends the
`cardholder’s actual card number to the card issuer’s authorization processor
`26.” Pet. 37–38 (quoting Ex. 1030 ¶ 32). Petitioner submits that “[t]he
`issuing bank 8 is a third party because the user and the merchant make up a
`first and second party.” Pet. 37 n.4.
`Patent Owner argues that Schutzer fails to teach the “third party”
`limitation because Schutzer’s issuing bank is the secure registry in
`Petitioner’s assertions and “keeps the information internal to itself when
`determining to authorize a transaction.” Prelim. Resp. 46 (emphasis
`omitted).4 Patent Owner recognizes Schutzer’s disclosures and points out
`that “[n]owhere in this process, however, does the actual card number (e.g.,
`account identifying information) ever leave the issuing bank’s server 14.” Id.
`(emphasis omitted).
`As discussed above, we do not agree that the claimed “third party”
`can be coextensive with the secure registry itself. See supra at 5. Petitioner
`identifies Schutzer’s “issuing bank server” as the claimed secure registry and
`
`
`4 Patent Owner too broadly interprets the Petition in this regard, which
`asserts not that the issuing bank is the secure registry, but instead that
`Schutzer’s “issuing bank server” is the secure registry. Pet. 25.
`
`8
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`Case IPR2018-00811
`Patent 8,856,539 B2
`
`asserts that the registry provides account-identifying information to the
`authorization processor, which is part of the issuing bank server. Pet. 37–38;
`see Ex. 1030, Fig. 1. We conclude Petitioner’s assertion is not consistent
`with the claim language, which requires that the secure registry provide the
`information to something other than the secure registry itself.
`Because Petitioner has not identified a teaching in Schutzer that the
`account-identifying information is provided outside the secure registry, we
`conclude that Petitioner has not shown a reasonable likelihood it would
`prevail with respect to anticipation. Accordingly, we do not institute review
`based on anticipation.
`
`C. OBVIOUSNESS OVER SCHUTZER
`Petitioner asserts claims 12, 31, and 34 are obvious over Schutzer.
`Pet. 63–69. In its assertions, Petitioner relies on obviousness for the
`limitations added by those dependent claims, but relies on its anticipation
`assertions for the limitations in the independent claims. Id. Therefore, our
`conclusion above applies also to Petitioner’s obviousness ground.
`Accordingly, we conclude Petitioner has not shown a reasonable likelihood
`it would prevail with respect to obviousness.
`
`III. CONCLUSION
`For the foregoing reasons, we determine the information presented in
`the Petition fails to establish a reasonable likelihood that Petitioner would
`prevail in showing any challenged claim unpatentable.
`
`9
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`
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`Case IPR2018-00811
`Patent 8,856,539 B2
`
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314(a), no inter partes
`review of the ’539 patent is instituted.
`
`
`
`10
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`Case IPR2018-00811
`Patent 8,856,539 B2
`
`PETITIONER:
`
`Monica Grewal
`Benjamin Fernandez
`Wilmer Cutler Pickering Hale and Dorr LLP
`monica.grewal@wilmerhale.com
`ben.fernandez@wilmerhale.com
`
`
`PATENT OWNER:
`
`James M. Glass
`Tigran Guledjian
`Christopher Mathews
`Nima Hefazi
`Richard Lowry
`Quinn Emanuel Urquhart & Sullivan LLP
`jimglass@quinnemanuel.com
`tigranguledjian@quinnemanuel.com
`chrismathews@quinnemanuel.com
`nimahefazi@quinnemanuel.com
`richardlowry@quinnemanuel.com
`
`
`11
`
`
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