Patent Owner’s Demonstrative Slides
`U.S. Patent No. 8,856,539
`
`Apple Inc., Petitioner v. Universal Secure Registry, LLC, Patent Owner
`Case No. IPR2018-00812
`United States Patent and Trademark Office
`August 27, 2019
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`1
`
`
`U.S. Patent No. 8,856,539
`
`Apple Inc., Petitioner v. Universal Secure Registry, LLC, Patent Owner
`Case No. IPR2018-00812
`United States Patent and Trademark Office
`August 27, 2019
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`1
`
`
`
`Roadmap
`
`Overview Of ‘539 Patent
`
`Overview Of Reber
`
`Overview Of Franklin
`
`Petitioner Has Not Shown The Claims Are Invalid
`
`USR’s Substitute Claims Are Patentable
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`2
`
`
`
`Roadmap
`
`Overview Of ‘539 Patent
`
`Overview Of Reber
`
`Overview Of Franklin
`
`Petitioner Has Not Shown The Claims Are Invalid
`
`USR’s Substitute Claims Are Patentable
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`3
`
`
`
`Overview Of The ’539 Patent
`
`’539 Patent
`
`US 8,856,539
`Universal Secure Registry
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• Petitioner Challenges
`Claims 1-3, 5-8, 16-24,
`26-30, 37-38 of the ’539
`Patent
`
`• Petitioner’s Only Ground
`is Reber in View of
`Franklin
`
`• Petitioner Has Not
`Shown Reber in View of
`Franklin Renders
`Obvious the Challenged
`Claims
`
`POR (Paper 25) at 26-64.
`
`4
`
`
`
`Overview Of The ’539 Patent
`
`“entities with secure data stored in the
`secure registry system”
`
`provider requests transaction and includes “indication
`of the provider requesting the transaction”
`
`Universal secure registry (USR) receives
`provider’s transaction request
`
`Transaction enabled or denied by providing
`“account identifying information” to the
`“third party” (e.g., credit card company)
`“without providing the account identifying
`information to the provider”
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• All challenged claims require:
`
`(1)
`
`“entities with secure data
`stored in the secure
`registry system” (e.g.,
`users)
`(2) A provider (e.g.,
`merchant) that sends a
`transaction request
`(3) A secure registry
`(4) A third party (e.g., credit
`card company)
`(5) Enabling/denying a
`transaction without
`providing “account
`identifying to the provider”
`Ex. 1101, ’539 Patent at 18:29-22:40,
`Fig. 8; POR (Paper 25) at 7-12, 19-25,
`26-64.
`
`5
`
`
`
`Overview Of The ’539 Patent
`
`Allows validation of user
`having “time-varying
`multicharacter code”
`
`“entities with secure
`data stored in the secure
`registry system”
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• At least some, if not all,
`claims also require:
`(6) “time-varying
`multicharacter code”
`(7) compliance with
`provider-specific “access
`restrictions”
`
`“access restrictions”
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
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`6
`
`Ex. 1101, ’539 Patent at FIG. 3.
`
`POR (Paper 25) at 7-12.
`
`
`
`Roadmap
`
`Overview Of ‘539 Patent
`
`Overview Of Reber
`
`Overview Of Franklin
`
`Petitioner Has Not Shown The Claims Are Invalid
`
`USR’s Substitute Claims Are Patentable
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`7
`
`
`
`Overview Of Reber
`
`Reber
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`US 5,930,767
`
`Transaction Methods Systems And
`Devices
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`8
`
`
`
`Overview Of Reber
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• Reber discloses methods
`and systems that
`authenticate a user “in a
`transaction based upon
`machine readable data
`read by a data reader at
`the end user’s location.”
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`9
`
`Ex. 1131, Reber at FIG. 8.
`
`POR (Paper 25) at 13-16.
`
`
`
`Reber Discloses Two Separate Embodiments
`
`Figure 9 Embodiment
`
`Figure 10 Embodiment
`
`PARTY
`
`Ex. 1131, Reber at FIGS. 9-10, 2:14-17.
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• Reber explicitly describes
`two different embodiments
`for executing transactions.
`• In first embodiment:
`transaction data includes a
`first data element indicating
`an item; transaction request
`is sent from end user 26 to
`computer 20.
`• In second embodiment:
`transaction data includes a
`first data element indicating
`a merchant; transaction
`request sent from user 26 to
`computer 64.
`
`POR (Paper 25) at 59-62.
`
`10
`
`
`
`Reber Transmits Sensitive Customer Information to Merchant
`ASSERTED PATENT
`’812
`’598
`’267
`• After authentication of the
`end user, Reber discloses
`that computer 64 (alleged
`secure registry) may send
`“name” and “address” of the
`“second party”
`(purchaser/end user 26) to
`the first party (merchant).
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
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`11
`
`Ex. 1131, Reber at 6:17-25.
`
`POR (Paper 25) at 28-29.
`
`
`
`Overview Of Reber
`
`The alleged
`“provider”
`
`The alleged “entities”
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• The Petition identifies the
`alleged “entities,”
`“provider,” and “secure
`registry.”
`
`The alleged secure
`registry (USR)
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
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`Ex. 1131, Reber at FIG. 1.
`
`POR (Paper 25) at 45-46
`(citing Petition at 19-25).
`
`12
`
`
`
`Overview Of Reber
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• The Petition does not
`identify a third party in
`Reber.
`
`Petitioner fails to identify the
`claimed “third party”
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`13
`
`Ex. 1131, Reber at FIG. 1.
`
`POR (Paper 25) at 45-46.
`
`
`
`Roadmap
`
`Overview Of ‘539 Patent
`
`Overview Of Reber
`
`Overview Of Franklin
`
`Petitioner Has Not Shown The Claims Are Invalid
`
`USR’s Substitute Claims Are Patentable
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`14
`
`
`
`Overview Of Franklin
`
`Franklin
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`US 6,000,832
`
`Electronic Online Commerce Card With
`Customer Generated Transaction Proxy
`Number For Online Transactions
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`15
`
`
`
`Overview Of Franklin
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• Franklin describes an
`online commerce card
`that includes digits
`reserved for an
`embedded code.
`• The code is generated
`based on a function of
`various inputs.
`• The resulting transaction
`number is sent to a
`merchant as a proxy for
`regular card number.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`16
`
`Ex. 1132, Franklin at FIG. 1, Abstract.
`
`POR (Paper 25) at 16-17, 46-48.
`
`
`
`Overview Of Franklin
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• As part of its transaction
`process, Franklin shares
`“customer-specific data,”
`which includes “card-
`holder’s name, account
`number, etc.,” with the
`merchant.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`17
`
`Ex. 1132, Franklin at 5:30-31, 9:49-58.
`
`POR (Paper 25) at 31-32.
`
`
`
`Overview Of Franklin
`
`The alleged
`“secure registry”
`
`alleged
`“entities”
`
`alleged
`“provider”
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• The Petition identifies the
`alleged “entities,”
`“provider,” and “secure
`registry.”
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`18
`
`Ex. 1132, Franklin at FIGS. 1, 7.
`
`POR (Paper 25) at 46-48
`see Petition at 24-28.
`
`
`
`Overview Of Franklin
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• Franklin fails to disclose
`a third party.
`
`“third party”
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`19
`
`Ex. 1132, Franklin at FIGS. 1, 7.
`
`POR (Paper 25) at 46-48.
`
`
`
`Roadmap
`
`Overview Of ‘539 Patent
`
`Overview Of Reber
`
`Overview Of Franklin
`
`Petitioner Has Not Shown The Claims Are Invalid
`
`USR’s Substitute Claims Are Patentable
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`20
`
`
`
`Petitioner Has Not Shown The Claims Are Invalid
`Reber In View Of Franklin Does Not Disclose:
`No Account Identifying Information (All Claims)
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`Determining Compliance With Access Restrictions For The Provider (Claims 1, 22, 37)
`
`Third Party (All Claims)
`
`Indication Of A Provider Requesting The Transaction (All Claims)
`
`Store An Appropriate Code With Each Restricted Portion Of Secure Data (Claim 37)
`
`Encrypting And Decrypting The Time-Varying Code (Claims 3 and 24)
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`21
`
`
`
`Petitioner Has Not Shown The Claims Are Invalid
`Reber In View Of Franklin Does Not Disclose:
`No Account Identifying Information (All Claims)
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`Determining Compliance With Access Restrictions For The Provider (Claims 1, 22, 37)
`
`Third Party (All Claims)
`
`Indication Of A Provider Requesting The Transaction (All Claims)
`
`Store An Appropriate Code With Each Restricted Portion Of Secure Data (Claim 37)
`
`Encrypting And Decrypting The Time-Varying Code (Claims 3 and 24)
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`22
`
`
`
`No Account Identifying Information Limitation
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`Ex. 1101, ‘539 patent at Claims 1, 22, 37 and 38.
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• All claims require
`enabling/denying
`transaction by providing
`information to a third party
`“without providing
`account identifying
`information to the
`provider.”
`
`• Petitioner fails to show
`Reber in view of Franklin
`discloses or renders
`obvious not providing
`account identifying
`information to the provider.
`POR (Paper 25) at 27-35;
`Sur-reply (Paper 33) at 1-5.
`23
`
`
`
`Petitioner’s Construction Of “Account Identifying Information”
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`Petition at 16.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`Ex. 1102 (Shoup Decl.), ¶¶ 73-74.
`
`• The Petition argues “account
`identifying information”
`means “personal information
`about an entity such as
`name, address, or account
`number.”
`• Petitioner’s expert also
`agrees that the ‘539
`specification “consistently”
`teaches not transmitting a
`purchaser’s “account
`information, including a
`user’s name, address, bank
`or credit card account
`numbers and other personal
`information.”
`
`POR (Paper 25) at 27-32;
`Sur-reply (Paper 33) at 1-3.
`24
`
`
`
`Petitioner Initially States That Reber Does Not Transmit “Any
`Account Identifying Information” To the Provider
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• In the Petition, Petitioner
`and its expert argued that
`Reber approves a
`transaction without the
`merchant [i.e., provider]
`receiving “any account
`identifying information.”
`
`• USR showed Petitioner
`was wrong. Reber
`discloses transmitting
`account identifying
`information to the provider.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`Petition at 16; Ex. 1102 (Shoup Decl.), ¶120 (same).
`
`POR (Paper 25) at 27-32;
`Sur-reply (Paper 33) at 1-3.
`25
`
`
`
`USR Proves Reber Transmits Account Identifying Information To
`The Provider Under Petitioner’s Own Construction
`
`ASSERTED PATENT
`’812
`’598
`’267
`• There is no disclosure in
`Reber that account
`identifying information is not
`sent to the provider.
`
`• Instead, Reber discloses
`alleged secure registry
`(database 66 in computer
`64) may send “name” and
`“address” of the “second
`party” [i.e., purchaser/end
`user 26]” to the first party
`[i.e., alleged provider].
`
`• Name/address are “account
`identifying information” under
`Petitioner’s own
`construction.
`
`26
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`Ex. 1131, Reber at 6:17-28; POR (Paper 25) at 2-3, 28-29;
`Sur-reply (Paper 33) at 3-4.
`
`
`
`USR Proves Reber Transmits Account Identifying Information To
`The Provider Under Petitioner’s Own Construction
`
`ASSERTED PATENT
`’812
`’598
`’267
`• Reber discloses the alleged
`provider [i.e., computer 20]
`“creates a record” that
`identifies “the party initiating
`the transaction” [i.e., account
`identifying information].
`
`Ex. 1131, Reber at 5:27-45.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`Ex. 2108 (Jakobsson Decl.), ¶40.
`
`• Reber also discloses that the
`alleged provider [i.e.,
`computer 20] can “send[] an
`item to the party.” A POSITA
`would understand that to
`send the item the alleged
`provider would have the
`name and address of the
`customer.
`
`POR (Paper 25) at 15-16, 29-31;
`Sur-reply (Paper 33) at 3-4, 11.
`
`27
`
`
`
`Franklin Also Discloses Transmitting Account Identifying
`Information To The Provider Under Petitioner’s Construction
`• Franklin does not disclose
`that account identifying
`information should not be sent
`to the provider.
`
`ASSERTED PATENT
`’812
`’598
`
`’267
`
`Ex. 1132, Franklin at 9:49-58
`
`• Franklin discloses customer-
`specific data (e.g., “card-
`holder’s name” and “account
`number”) are “pre-known or
`made available” to the
`merchant [i.e., provider].
`
`• “Name” and “account
`number” are “account
`identifying information” under
`Petitioner’s construction.
`POR (Paper 25) at 27-35;
`Sur-reply (Paper 33) at 1-5.
`28
`
`Ex. 1132, Franklin at 2:22-39
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`
`
`Petitioner Seeks To Abandon Its Claim Construction And Present A New
`Argument
`ASSERTED PATENT
`’267
`’812
`’598
`
`Petitioner said in the Petition:
`
`Petition at 16.
`Petitioner now seeks to abandon its claim construction:
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`Reply (Paper 30) at 2.
`
`• Because USR showed
`that Reber in view of
`Franklin does not disclose
`the no account identifying
`limitation, Petitioner seeks
`to abandon its claim
`construction.
`• Petitioner now argues that
`“without providing
`account identifying
`information to the
`provider” limitation allows
`some account identify
`information to be sent to
`the provider.
`
`POR (Paper 25) at 27-35;
`Sur-reply (Paper 33) at 1-5.
`29
`
`
`
`Petitioner Seeks To Abandon Its Claim Construction And Present A New
`Argument
`ASSERTED PATENT
`’267
`’812
`’598
`
`Petitioner’s expert said in his opening declaration:
`
`Petitioner’s expert now seeks to change his opinion
`
`Ex. 1102 (Shoup Decl.), ¶¶ 73-74
`
`Paper 30 (Petitioner Reply) at 2
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`• Because USR showed
`that Reber in view of
`Franklin does not disclose
`the no account identifying
`limitation, Petitioner’s
`expert seeks to change
`his opinions.
`• Petitioner’s expert now
`opines that the “without
`providing account
`identifying information to
`the provider” limitation
`allows some account
`identify information to be
`sent to the provider.
`
`POR (Paper 25) at 27-35;
`Sur-reply (Paper 33) at 1-5.
`30
`
`
`
`Petitioner said in the Petition:
`
`Petitioner Seeks To Abandon Its Claim Construction And Present A New
`Argument
`ASSERTED PATENT
`’267
`’812
`’598
`• In the Petition, Petitioner
`argued that the patent
`“consistently” describes
`“providing anonymous
`identification of a person…
`without ever transmitting
`to the merchant
`information, such as the
`person’s credit card
`number, or even the
`person’s name.”
`• Petitioner now argues that
`“the types of ‘account
`identifying information’ that
`are withheld from the
`provider can vary.”
`POR (Paper 25) at 27-35;
`Sur-reply (Paper 33) at 1-5.
`31
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`Paper 30 (Petitioner Reply) at 3
`
`Petitioner now says:
`
`Paper 3 (Petition) at 16
`
`
`
`The Board Should Reject Petitioner’s Improper New Argument
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• Petitioner’s new argument
`that the “without
`providing account
`identifying information to
`the provider” limitation
`allows some account
`identify information to be
`sent to the provider is
`improper.
`
`• Petitioner should not be
`permitted to change its
`claim construction for
`“account identifying
`information.”
`POR (Paper 25) at 27-35;
`Sur-reply (Paper 33) at 1-5.
`32
`
`PTAB Trial Practice Guide August 2018 Update at 14.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`
`
`Petitioner Relies On Claim 4 To Supports Its New Construction:
`
`Petitioner Has Not Shown Its New Claim Construction Is Proper
`ASSERTED PATENT
`’267
`’812
`’598
`• Petitioner argues that
`claim 4 teaches the
`“without providing account
`identifying information to
`the provider” limitation is
`met where some account
`identifying information
`(e.g., customer address) is
`sent to the provider.
`
`• Tellingly, Petitioner did not
`rely upon claim 4 in the
`Petition. Petitioner is also
`wrong because claim 4
`discloses that address
`information is sent to the
`“third party”—it is not sent
`to the provider.
`
`33
`
`Reply (Paper 30) at 2.
`But Claim 4 Discloses The Address Information Is Sent To The
`Third Party, Not The Provider:
`
`Ex. 1101, ‘539 Patent at Claim 4; Sur-reply (Paper 33) at 1-2.
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`
`
`Petitioner’s Reliance On The Specification Is Misplaced
`
`Petitioner argues in some embodiments account identifying
`information can be sent to the provider (e.g., Fig. 9):
`
`Ex. 1101, ‘539 patent at 12:55-63;
`Reply (Paper 30) at 2-3.
`But patent does
`not need to claim
`every disclosure in
`the specification:
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• Whether the specification
`provides examples where
`a user’s name or address
`is provided to a merchant
`is irrelevant: claims define
`the scope of the invention,
`not the specification.
`
`• A patent does not need to
`claim every disclosure or
`embodiment. Here, claims
`expressly claim “account
`identifying information is
`not provided to the
`provider.”
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`Sur-Reply (Paper 33) at 2-3.
`
`34
`
`
`
`Petitioner Has Not Shown The Claims Are Invalid
`Reber In View Of Franklin Does Not Disclose:
`No Account Identifying Information (All Claims)
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`Determining Compliance With Access Restrictions For The Provider (Claims 1, 22, 37)
`
`Third Party (All Claims)
`
`Indication Of A Provider Requesting The Transaction (All Claims)
`
`Store An Appropriate Code With Each Restricted Portion Of Secure Data (Claim 37)
`
`Encrypting And Decrypting The Time-Varying Code (Claims 3 and 24)
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`35
`
`
`
`Access Restrictions For The Provider Limitation
`
`Access Restrictions Limitation (Claims 1, 22, and 37):
`
`Ex. 1101, ‘539 patent at Claim 1.
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• Petitioner fails to show
`Reber in view of Franklin
`renders obvious
`“determining compliance
`with access restrictions for
`the provider to secure data
`of the entity.”
`
`• Petitioner also fails to show
`any alleged determination
`is “based at least in part on
`the indication of the
`provider and the time-
`varying multicharacter code
`of the transaction request.”
`
`POR (Paper 25) at 35-45;
`Sur-reply (Paper 33) at 5-16.
`36
`
`
`
`Petitioner Has Not Shown The Access Restriction Limitation Is Satisfied
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`Petitioner fails to show “determining compliance with access
`restrictions for the provider to secure data of the entity”
`
`Petitioner fails to show determining compliance is “based at least in
`part on the indication of the provider and the time-varying
`multicharacter code of the transaction request.”
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`POR (Paper 25) at 35-45;
`Sur-reply (Paper 33) at 5-16.
`37
`
`
`
`Petitioner Concedes Reber Does Not Expressly Disclose Access Restrictions
`ASSERTED PATENT
`’267
`’812
`’598
`• Petitioner concedes that
`Reber does not
`expressly disclose any
`access restrictions.
`
`• Dispute is limited to
`whether access
`restrictions limitation is
`obvious in view of
`Franklin.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`Petition at 36.
`
`POR (Paper 25) at 35-45;
`Sur-reply (Paper 33) at 5-16.
`38
`
`
`
`Franklin’s Merchant Validation Is Not A Disclosure Of Access Restrictions For
`The Provider
`ASSERTED PATENT
`’812
`’598
`’267
`• Petitioner argues obvious to
`incorporate Franklin’s
`merchant validation.
`
`• Merchant validation is not a
`disclosure of access
`restrictions and is not
`performed by the secure
`registry.
`
`• Petitioner also fails to show
`motivation to combine Reber
`and Franklin for this
`limitation.
`
`POR (Paper 25) at 37-39, 42-45;
`Sur-reply (Paper 33) at 11-16.
`39
`
`Ex. 1132, Franklin at 11:39-49.
`
`Petition at 37.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`
`
`The Board Should Adopt PO’s Construction For The Access Restrictions
`Limitation
`ASSERTED PATENT
`’267
`’812
`’598
`
`• Petition did not offer a
`construction of “access
`restrictions for the provider
`to [secure data / at least one
`portion of secure data].”
`
`• Board should adopt PO’s
`construction because it is
`supported by the claim
`language and specification.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`POR (Paper 25) at 21-23;
`Sur-reply (Paper 33) at 5-10.
`40
`
`
`
`Reber And Franklin Fail To Disclose Access Restriction Limitation Under PO’s
`Construction
`ASSERTED PATENT
`’267
`’812
`’598
`
`• Franklin’s merchant
`validation simply verifies
`that the merchant is a valid
`merchant.
`
`• Franklin’s merchant
`validation is not a disclosure
`of a restriction specific to
`the provider that indicates
`what secure data may or
`may not be accessed, and
`is also not “two or more”
`restrictions.”
`
`POR (Paper 25) at 37-39;
`Sur-reply (Paper 33) at 11-16.
`41
`
`Ex. 2108 (Jakobsson Decl.), ¶¶ 70-72.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`
`
`Petitioner Does Not Even Attempt To Show Reber and Franklin Discloses “Two
`Or More Restrictions” For The Provider
`ASSERTED PATENT
`’267
`’812
`’598
`
`• Petitioner points only to
`Franklin’s merchant
`validation. Petitioner does
`not (and cannot) point to
`disclosure of “two or more”
`restrictions for the provider.
`
`• Claims 1, 22 and 37 (and
`their dependent claims) are
`not unpatentable if the
`Board concludes “access
`restrictions” [plural]
`requires more than one
`access restriction.
`
`Sur-reply (Paper 33) at 10.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`42
`
`
`
`Patent Discloses That Merchant Validation ≠ Access Restrictions
`
`Even If PO’s Construction Is Not Adopted, Petitioner Has Failed To Show
`Determining Compliance With Access Restriction For The Provider
`ASSERTED PATENT
`’267
`’812
`’598
`• ‘539 patent makes clear
`that “validating requestor’s
`identity” [i.e., the merchant
`validation] is not the same
`as “correlating the identity,
`the requested information
`and the access information”
`to determine “whether the
`requester has the right to
`access the requested data
`type” [i.e., “determining
`compliance with access
`restrictions of the provider”].
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`Ex. 1101, ‘539 Patent at 10:40-48;
`POR (Paper 25) at 22-23, 38-39.
`
`• Thus, under any
`construction of “access
`restrictions” Petitioner has
`failed to meet its burden.
`
`43
`
`
`
`Petitioner Has Not Shown The Access Restriction Limitation Is Satisfied
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`Petitioner fails to show “determining compliance with access
`restrictions for the provider to secure data of the entity”
`
`Petitioner fails to show determining compliance is “based at least in
`part on the indication of the provider and the time-varying
`multicharacter code of the transaction request.”
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`POR (Paper 25) at 35-45;
`Sur-reply (Paper 33) at 5-16.
`44
`
`
`
`Petitioner Fails To Show Determining Compliance Based On A Time-Varying
`Multi-Character Code
`ASSERTED PATENT
`’267
`’812
`’598
`
`• Parties agree that
`Reber does not disclose
`any access restrictions.
`
`• Reber thus cannot
`disclose compliance
`with access restrictions
`is based on a time-
`varying multicharacter
`code.
`
`POR (Paper 25) at 36-39.
`
`45
`
`Petition at 36.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`
`
`Petitioner Fails To Show Determining Compliance Based On A Time-Varying
`Multi-Character Code
`ASSERTED PATENT
`’267
`’812
`’598
`
`• Franklin discloses that its
`merchant validation is
`based on the acquiring
`bank “verifying the
`merchant is a valid
`merchant and the credit
`card number represents a
`valid number.”
`
`• There is no teaching or
`suggestion in Franklin that
`the merchant validation is
`based on a time-varying
`multicharacter code.
`
`POR (Paper 25) at 35-45;
`Sur-reply (Paper 33) at 11-16.
`46
`
`Ex. 1132, Franklin at 11:39-49.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`
`
`Petitioner Has Not Shown The Claims Are Invalid
`Reber In View Of Franklin Does Not Disclose:
`No Account Identifying Information (All Claims)
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`Determining Compliance With Access Restrictions For The Provider (Claims 1, 22, 37)
`
`Third Party (All Claims)
`
`Indication Of A Provider Requesting The Transaction (All Claims)
`
`Store An Appropriate Code With Each Restricted Portion Of Secure Data (Claim 37)
`
`Encrypting And Decrypting The Time-Varying Code (Claims 3 and 24)
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`47
`
`
`
`The “Third Party” Limitation
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• All claims require
`providing account
`identifying information to
`a “third party” to enable
`or deny the transaction
`without providing the
`account identifying
`information to the
`provider.
`
`• Petitioner fails to show
`Reber in view of Franklin
`discloses or renders
`obvious this limitation.
`
`POR (Paper 25) at 45-55;
`Sur-reply (Paper 33) at 16-23.
`48
`
`
`
`The Proper Construction of “Third Party”
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• The Board already
`carefully analyzed the
`claim language and
`found that the term “third
`party” should be
`construed as “a party that
`is not the secure registry
`itself, the user, or the
`provider.”
`
`Institution Decision (Paper 9) at 6-7.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`POR (Paper 25) at 23-25.
`
`49
`
`
`
`Franklin and Reber Both Disclose a Single-Component
`Backend With No “Third Party”
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`Reber:
`
`Ex. 1131, Reber at 6:17-29.
`
`• According to the Petition,
`Reber only allegedly
`discloses: (1) an entity (end
`user 26), (2) a provider
`(computer 20), and (3) a
`secure registry (computer
`64).
`
`• Like Reber, Franklin also
`discloses a single-
`component backend (bank
`computing center 32) that
`performs all financial
`processing.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`Ex. 1132, Franklin at FIG. 7.
`
`POR (Paper 25) at 45-48;
`Sur-reply (Paper 33) at 22-23.
`50
`
`
`
`A POSITA Would Not Be Motivated to Modify Reber To
`Include a Redundant Feature
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• Reber’s computer 64 (the
`alleged secure registry)
`is a self-contained
`component that already
`performs all the backend
`functions of a financial
`institution.
`• Consequently, a POSITA
`would have no motivation
`to add another backend
`component that merely
`adds the redundant
`feature of financial
`transaction processing.
`
`POR (Paper 25) at 48-50;
`Sur-reply (Paper 33) at 22-23.
`51
`
`Ex. 2108 (Jakobsson Decl.) at ¶86.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`
`
`Petitioner’s Alleged Motivation to Modify Reber Is
`Based on Impermissible Hindsight
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• As alleged motivation to modify
`Reber, Petitioner relies
`primarily on disclosures within
`the ’539 Patent itself.
`• But, doing so is improper
`because Petitioner’s
`obviousness analysis must
`“avoid hindsight reconstruction
`by using the patent in suit as
`a guide through the maze of
`prior art references, combining
`the right references in the right
`way so as to achieve the result
`of the claims in suit.” In re NTP,
`Inc., 654 F.3d 1279, 1299 (Fed.
`Cir. 2011) (emphasis added).
`
`POR (Paper 25) at 50-53.
`
`52
`
`Petition at 40.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`
`
`Petitioner Provides No Reasoning As to How or Why a POSITA Would Modify Reber to
`ASSERTED PATENT
`Work With Franklin’s Backend Processing System
`’267
`’812
`’598
`
`Petitioner’s Expert:
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`Ex. 2111 (Shoup Depo. Tr.) at 136:23-137:1.
`
`• Petitioner’s expert alleges
`(1) that Reber’s computer
`64/database 66 could stop
`its task of authenticating the
`second data element and (2)
`this core responsibility could
`be shifted over to Franklin’s
`backend processing
`network.
`• Petitioner’s expert’s
`handwaving is unconvincing
`because Petitioner’s expert
`conceded at his deposition
`that he is not an expert in
`backend processing
`systems.
`
`POR (Paper 25) at 53-55.
`
`53
`
`
`
`Petitioner’s New Arguments in Reply Should Be Disregarded And In Any Event Are
`ASSERTED PATENT
`Unconvincing
`’267
`’812
`’598
`
`• Petitioner new arguments on
`Reply that Reber alone
`discloses a “third party”
`because computer 64 “could
`take on a role as an
`intermediary…that directs”
`“a third party (such as a
`bank) to credit and debit
`accounts” are too late, and
`Reber never mentions that
`computer 64 directs a third
`party.
`• Petitioner adds its own
`disclosure to Reber by
`including new annotations to
`the figures that are not
`present in Reber or Petition.
`
`Sur-reply (Paper 33) at 16-22.
`54
`
`Reply (Paper 30) at 16-17.
`
`Reply (Paper 30) at 18.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`
`
`Petitioner Has Not Shown The Claims Are Invalid
`Reber In View Of Franklin Does Not Disclose:
`No Account Identifying Information (All Claims)
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`Determining Compliance With Access Restrictions For The Provider (Claims 1, 22, 37)
`
`Third Party (All Claims)
`
`Indication Of A Provider Requesting The Transaction (All Claims)
`
`Store An Appropriate Code With Each Restricted Portion Of Secure Data (Claim 37)
`
`Encrypting And Decrypting The Time-Varying Code (Claims 3 and 24)
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`55
`
`
`
`No “Receiving a Transaction Request” Including “An Indication of a
`Provider Requesting the Transaction”
`ASSERTED PATENT
`’267
`’812
`’598
`
`• Independent claims 1
`and 22 require the
`secure registry
`“receiv[e/ing] a
`transaction request
`including…an indication
`of the provider requesting
`the transaction.”
`• Petitioner fails to show
`Reber in view of Franklin
`discloses or renders
`obvious this limitation.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`Ex. 1101, ’539 Patent at Claims 1, 22.
`
`POR (Paper 25) at 55-62;
`Sur-reply (Paper 33) at 23-28.
`56
`
`
`
`The Proper Construction of “The Provider Requesting the
`Transaction”
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• Both the claim language
`and the ’539 specification
`support Patent Owner’s
`construction that the
`provider requesting the
`transaction is “the
`provider that sent the
`transaction request.”
`
`Ex. 1101, 539 patent at 11:56-65.
`
`Ex. 1101, ‘539 patent at Cl. 22.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`POR (Paper 25) at 19-21, 56;
`Sur-reply (Paper 33) at 23-25.
`57
`
`
`
`Petitioner Combines Multiple Embodiments of
`Reber
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• Petitioner acknowledges
`in its Reply that it
`combines multiple,
`disparate embodiments
`within Reber.
`
`• According to Petitioner,
`these embodiments
`describe “two separate”
`methods.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`Reply (Paper 30) at 22.
`
`POR (Paper 25) at 56-57;
`Sur-reply (Paper 33) at 25.
`58
`
`
`
`Petitioner Fails to Provide Any Motivation to Combine
`the Different Embodiments of Reber
`
`A: I can’t point to such a motivation to
`combine in my declaration, [nor did] I feel
`i[t] was necessary.
`POR (Paper 25) at 57 (citing Ex. 2111 (Shoup Deposition Tr.) at 63:21-64:4).
`“Whether a rejection is based on combining disclosures from multiple
`references, combining multiple embodiments from a single reference,
`or selecting from large lists of elements in a single reference, there must
`be a motivation to make the combination and a reasonable
`expectation that such a combination would be successful, otherwise a
`skilled artisan would not arrive at the claimed combination.”
`In re: Stepan Company, 868 F.3d. 1342, 1346 & n.1 (Fed. Cir. 2017) (emphasis added).
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• Petitioner’s expert
`acknowledged that he
`failed to provide any
`motivation for combining
`the two embodiments.
`– This contradicts
`established Federal
`Circuit law requiring that
`Petitioner provide a
`motivation to combine the
`different embodiments
`and a reasonable
`expectation of success.
`
`POR (Paper 25) at 55-58.
`
`59
`
`
`
`Reber’s Boilerplate Language Does Not Provide
`Motivation to Combine the Two Embodiments
`
`Ex. 1131, Reber at 11:33-36.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• Petitioner relies on
`boilerplate language in
`the penultimate
`paragraph of Reber as
`alleged motivation for
`combining the two
`embodiments.
`– But, this boilerplate
`language is far too
`generic to motivate a
`POSITA; nor does the
`language suggest the two
`embodiments cited in the
`Petition can be combined.
`
`Sur-reply (Paper 33) at 25-26.
`
`60
`
`
`
`Petitioner’s New Arguments in Reply Should Be
`Disregarded
`Petitioner said in the Petition:
`
`Petitioner now says in Reply:
`
`Petition at 33.
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`Reply (Paper 30) at 22-23.
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`• In its Petition, Petitioner
`exclusively relied on
`Reber for limitations 1[b]
`and 22[a].
`• Now, for the first time in
`its Reply, Petitioner relies
`on the combination of
`Reber and Franklin to
`argue this limitation
`would have been
`obvious.
`– This new argument on
`Reply comes too late and
`should be disregarded.
`
`Sur-reply (Paper 33) at 26-28.
`
`61
`
`
`
`Petitioner Has Not Shown The Claims Are Invalid
`Reber In View Of Franklin Does Not Disclose:
`No Account Identifying Information (All Claims)
`
`’267
`
`ASSERTED PATENT
`’812
`’598
`
`Determining Compliance With Access Restrictions For The Provider (Claims 1, 22, 37)
`
`Third Party (All Claims)
`
`Indication Of A Provider Requesting The Transaction (All Claims)
`
`Store An Appropriate Code With Each Restricted Portion Of Secure Data (Claim 37)
`
`Encrypting And Decrypting The Time-Varying Code (Claims 3 and 24)
`
`DEMONSTRATIVE EXHIBIT ONLY – NOT EVIDENCE
`
`62
`
`
`
`No Dispute That Petitioner Has Not Shown Claim 37 Is
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