Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 9
`Entered: November 7, 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 IPR2018-00812
`Patent 8,856,539 B2
`____________
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`Paper 9
`Entered: November 7, 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 IPR2018-00812
`Patent 8,856,539 B2
`____________
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`Case IPR2018-00812
`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, 16–24, 26–30, 37, and 38 (“the
`challenged claims”) of U.S. Patent No. 8,856,539 B2 (Ex. 1101, “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 shown a reasonable
`likelihood it will prevail in establishing the unpatentability of at least one
`challenged claim. We, therefore, institute inter partes review of the
`challenged claims 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. 1101,
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`[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
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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. 1101, 18:29–60.1
`
`
`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.
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`D. PROPOSED GROUND OF UNPATENTABILITY
`Petitioner asserts claims 1–3, 5–8, 16–24, 26–30, 37, and 38 are
`unpatentable as obvious under 35 U.S.C. § 103(a) in view of Reber2 and
`Franklin3. Pet. 24, 63. Petitioner also relies on the Declaration of Dr. Victor
`Shoup (Ex. 1102). 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). Furthermore, 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 F.3d 1056, 1063–64 (Fed. Cir. 2016) (quoting Elbex Video,
`Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007)).
`
`
`2 U.S. Patent No. 5,930,767 (filed May 28, 1997; issued July 27, 1999)
`(Ex. 1131).
`3 U.S. Patent No. 6,000,832 (filed Sept. 24, 1997; issued Dec. 14, 1999)
`(Ex. 1132).
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`Petitioner proposes constructions for several terms in the ’539 patent:
`“provider,” “entity,” and “time-varying multicharacter code,” “indication of
`the provider,” “account identifying information,” and “secure registry.”
`Pet. 12–17. Patent Owner proposes a construction for one term: “third
`party.” Prelim. Resp. 20–22.
`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. 51.
`Petitioner does not address the issue directly, but argues that a bank’s
`“traditional backend processing network” is a third party to the bank’s
`system for authenticating users. Pet. 40–41. Patent Owner contends that
`Petitioner’s assertion improperly treats Franklin’s bank computing center as
`both the secure registry and the third party. Prelim. Resp. 52–53.
`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. 20–21. 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 21–22 (citing Ex. 1101, 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
`the “third party” cannot be the secure registry system. The claims recite that
`the secure-registry processor is configured such that “account identifying
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`information is provided to a third party.” By using “provided,” the claim
`instructs that the secure registry must send account-identifying information
`somewhere, not simply perform an additional operation on the information.4
`Accordingly, we construe “third party” as “a party that is not the secure
`registry itself, the user, or the provider.”
`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. OBVIOUSNESS OVER REBER AND FRANKLIN
`An invention is not patentable “if the differences between the subject
`matter sought to be patented and the prior art are such that the subject matter
`as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`35 U.S.C. § 103(a).5 The question of obviousness is resolved on the basis of
`underlying factual determinations including: (1) the scope and content of the
`prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and, (4) where in evidence, so-called
`secondary considerations, including commercial success, long-felt but
`unsolved needs, and failure of others. Graham v. John Deere Co.,
`383 U.S. 1, 17−18 (1966). When evaluating a combination of teachings, we
`
`
`4 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)
`5 The America Invents Act included revisions to, inter alia, 35 U.S.C. § 103
`effective on March 16, 2013. Because the application resulting in the ’539
`patent was filed before March 16, 2013 (see Ex. 1101, [22]), the pre-AIA
`version of 35 U.S.C. § 103 applies.
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`must also “determine whether there was an apparent reason to combine the
`known elements in the fashion claimed by the patent at issue.” KSR Int’l Co.
`v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441, F.3d 977,
`988 (Fed. Cir. 2006)). Whether a combination of elements produced a
`predictable result weighs in the ultimate determination of obviousness. KSR,
`550 U.S. at 416–17.
`
`1. Petitioner’s assertions
`Petitioner asserts that claims 1–3, 5–8, 16–24, 26–30, 37, and 38 are
`obvious over Reber and Franklin. Pet. 19–71. Patent Owner raises several
`arguments against institution, which we address below. Because the
`independent claims recite a variety of limitations, some of Patent Owner’s
`arguments apply to only certain of the challenged claims. We focus our
`analysis at this stage on claim 1, addressing differences where significant.
`Petitioner relies on Reber as the primary reference, which discloses “a
`system for conducting secure financial transactions anonymously by
`utilizing proxy information representing a user.” Pet. 17. In particular, a user
`device in Reber transmits a transaction request that includes data
`representing the user and the merchant. Ex. 1131, 5:45–60. The data
`identifying the user includes both a personal identification code and a time-
`varying value. Id. at 4:14–20. Once a transaction request is transmitted to a
`remote computer, that computer may approve the transaction based on
`authenticating the user. Id. at 5:4–9, 5:16–32.
`Petitioner further relies on Franklin, which “discloses a system for
`anonymous authentication of a party to a financial transaction using a
`randomly generated ‘transaction number’ in place of a user’s personal
`account information.” Pet. 18 (citing Ex. 1132, [57]). The transaction
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`number is used in place of a regular card number, and a merchant passes the
`transaction number to its bank, which in turn passes it to the user’s bank, the
`issuing institution. Id. at 2:35–38. The issuing institution uses information in
`the transaction number to identify the customer and generate matching
`information so it can authenticate the user and approve the transaction. Id. at
`2:51–3:6. Franklin discloses that the acquiring bank (the merchant’s bank)
`“validates the authorization request by verifying that the merchant is a valid
`merchant.” Id. at 11:43–45. It also discloses that once the issuing bank’s
`system verifies the transaction number and substitutes the customer account
`number for the transaction number, the system performing authentication
`“then submits the authorization request to the bank’s traditional processing
`system 84 for normal authorization processing.” Id. at 12:27–33.
`Petitioner submits that Reber teaches most limitations of the
`challenged claims and that a skilled artisan would have incorporated certain
`teachings from Franklin to arrive at the claimed subject matter. Pet. 19–42.
`In particular, Petitioner submits that Franklin teaches merchant validation
`and that a skilled artisan had reason to incorporate merchant validation “as
`part of the validation process performed by the processor and database . . . to
`improve the security of the Reber system,” thereby “reducing fraud by
`merchants.” Id. at 37 (citing Ex. 1102 ¶ 114).
`Additionally, Petitioner submits that a skilled artisan had reason to
`incorporate Franklin’s teaching to submit an authorization request to a
`traditional processing system for processing “to complete the transaction.”
`Id. at 40–41.
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`We have reviewed Petitioner’s submissions and, other than as
`discussed below, determine that Petitioner has shown a reasonable
`likelihood of prevailing with unpatentability.
`
`2. Patent Owner’s arguments against institution
`a. Reason to combine
`Patent Owner argues that a skilled artisan had no reason to combine
`Franklin’s teachings with those of Reber. Prelim. Resp. 23–27. First, Patent
`Owner argues that Franklin teaches away from the combination because
`Franklin teaches seamless integration into existing merchant and banking
`systems, whereas Reber introduces a new scheme and hardware, and thus is
`not backwards compatible. Id. at 23–26. Patent Owner argues that Reber
`implements a system with anonymity by using a time-varying bar code
`whereas Franklin includes the user name in transactions. Id. at 26–27. We
`recognize that Reber’s system lacks certain advantages taught by Franklin,
`but Patent Owner has not identified aspects of Franklin that are so at odds
`with Reber so as to discourage a skilled artisan from making the asserted
`combination. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
`Patent Owner argues also that Petitioner provides inadequate reasons
`to combine the references. Prelim. Resp. 27–37. Patent Owner’s arguments,
`however, focus on whether the references may be combined overall, not
`whether Petitioner’s arguments for combining individual features are flawed.
`For example, Patent Owner argues that Reber and Franklin address different
`problems. Id. at 28–29. But even accepting that, it does not undermine
`Petitioner’s assertions because “familiar items may have obvious uses
`beyond their primary purposes.” KSR, 550 U.S. at 420.
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`Patent Owner further criticizes Petitioner’s reasons for using the
`references together as inadequate. Prelim. Resp. 35–37. We understand
`Petitioner’s discussion to provide a general framework for how the
`references would be used together. See Pet. 23–31. Petitioner additionally
`provides reasons for using Franklin’s individual teachings with Reber’s
`system (see id. at 36–42 (addressing limitations 1[d] and 1[e])), and we
`evaluate those as challenged (see infra at 15–17 (section II.B.2.d)).
`Accordingly, we do not agree with Patent Owner that Petitioner fails
`to provide adequate reasons that a skilled artisan would have used Franklin’s
`teachings in combination with Reber’s.
`b. Transaction request including a time-varying multicharacter code
`and an indication of the provider requesting the transaction
`Petitioner relies on Reber as disclosing the claimed transaction
`request. Pet. 33–35. Patent Owner argues that Reber fails to disclose a
`transaction request including both a “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.” Prelim. Resp. 37–43. This
`argument applies to only claims 1 and 22. Id. at 37–38.
`Patent Owner’s arguments appear to be premised on the notion that
`the claims require “the secure registry receives the transaction request from
`the provider.” Prelim. Resp. 38 (emphasis added); accord id. at 42–43. But
`the plain language of the claims does not recite such a requirement, and we
`decline to read one into the claims at this stage. The claim language does not
`mandate that the provider “requesting a transaction” play any role in
`generating the transaction request or passing it to the secure registry. Instead,
`it indicates simply that the provider desires to have the transaction
`completed.
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`Moreover, we are not persuaded at this stage that Reber’s
`“computer 20” is not a merchant. Reber discloses that, in prior systems, a
`personal identification number (PIN) serves as a proxy for a user’s credit
`card number and is submitted “to a Web-based merchant via the Internet.”
`Ex. 1131, 1:39–43. Reber purports to improve on such a system in multiple
`ways, including eliminating the need for users to remember a PIN and
`strengthening the system against interception of the PIN. Id.at 1:48–55.
`Thus, Reber discloses acquiring a user’s identifying information using a data
`reader (so the user need not remember the information) and making the PIN
`“time-varying and nonpredictable” (so interception would not permit
`ongoing unauthorized access). See id. at 3:6–19, 4:14–27. The system
`transmits the required information to “computer 20,” allowing the computer
`to “selectively approve[] or disapprove[] the transaction based upon the
`second data element” (identifying the user requesting the transaction). See
`id. at 4:63–5:9. For Reber’s computer 20 to be a merchant computer is
`consistent with Reber’s goal of improving a system where payment
`information is submitted to merchants. See id. at 1:39–43.
`We do agree with Patent Owner that Reber describes a system in
`which a transaction request is sent to a registry. See Prelim. Resp. 39. Reber
`teaches that, rather than processing a request, computer 20 may send it to
`computer 64 for authentication. Ex. 1131, 5:7–9, 5:16–24. Thus, we do not
`agree with Patent Owner’s argument that Reber does not disclose a system
`in which a merchant receives a transaction request and sends it to a registry
`for authentication.
`Patent Owner argues also that Petitioner improperly draws from two
`different embodiments of Reber by relying on the description of an
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`alternative transaction request that includes information about the
`provider/merchant. Prelim. Resp. 40–42; see Ex. 1131, 5:45–60. Based on
`the present record, we do not view Reber’s two transaction requests as
`wholly separate embodiments. Rather, the “second preferred transaction
`method” appears to describe an alternative form of the message generated
`for a transaction that would operate just as the transaction described in the
`first embodiment.
`Accordingly, we do not agree with Patent Owner that Petitioner fails
`to show the claimed transaction request.
`c. Secure data and secure registry
`All challenged claims recite “secure data” and “secure registry.”
`Petitioner submits that a skilled artisan “would have understood that in a
`system designed to prevent fraud like Reber, the database itself would need
`to be secure.” Pet. 21. Petitioner further argues that the verification checks
`Franklin discloses “would be meaningless” without a secure database. Id.
`Patent Owner argues that the combination of Reber and Franklin fails
`to teach “secure data” or a “secure registry.” Prelim. Resp. 43–44. Patent
`Owner does not propose a construction for “secure registry” or otherwise
`argue what the claims require, other than to distinguish the security in Reber
`and Franklin as relating to transmitted, rather than stored, data. Prelim.
`Resp. 44.
`We conclude that, absent some restriction on what is required to
`secure data in the registry, the broadest-reasonable construction of the term
`encompasses financial systems such as those described by both Reber and
`Franklin. Accordingly, we do not agree with Patent Owner that Petitioner
`fails to show the claimed secure data and secure registry.
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`d. Restriction mechanism
`Claim 1 requires the processor be configured:
`
`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.
`Claims 22 and 37 recite similar limitations. See Prelim. Resp. 45. Patent
`Owner argues that Petitioner fails to show such a mechanism. Id.
`Petitioner argues that a skilled artisan would have understood the need
`for validating the provider/merchant for a transaction. Pet. 36. In light of that
`need, Petitioner argues, such a person would have looked to Franklin, which
`discloses checking to ensure the merchant is valid (thus complying with
`access restrictions). Id. at 37 (citing Ex. 1132, 11:38–47). According to
`Petitioner, skilled artisans “would have applied the known techniques of
`Franklin to improve the security of the Reber system,” and “[s]uch
`modifications would have had the predictable result of reducing fraud by
`merchants.” Id.
`Regarding Franklin’s disclosures, Patent Owner argues that “simply
`because a merchant is validated by the issuing bank of Franklin does not
`mean that access to data stored at the database is made accessible.” Prelim.
`Resp. 48. In our view, Patent Owner’s framing improperly limits the term
`“access restrictions,” which does not require that such restrictions permit
`access to data once satisfied. Patent Owner points out that the Specification
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`discloses checking a party’s identity before permitting a transaction. Prelim.
`Resp. 46 (citing Ex. 1101, 9:1–6, 10:40–47). That disclosure appears to be
`consistent with Petitioner’s contentions regarding Franklin.
`Patent Owner argues that Franklin’s validation procedure is performed
`by the acquiring bank, not the issuing bank, and that only the issuing bank
`controls access to the data. Prelim. Resp. 48–49. Patent Owner argues
`further that Petitioner “fails to even allege a motivation to move or change
`the architecture.” Id. at 49. Petitioner asserts that a skilled artisan “would
`have found it obvious to either involve an acquiring bank that performed
`merchant validation or implement merchant validation as part of the
`validation process performed by the processor and database.” Pet. 37
`(emphasis added). As an initial matter, we do not agree that involving an
`acquiring bank that performs merchant validation would satisfy the claim
`language. In that regard, we agree with Patent Owner that the restriction
`mechanism must occur as part of the secure registry, not on another system.
`See Prelim. Resp. 48.
`Petitioner’s other assertion, however, is consistent with the record.
`Petitioner’s declarant supports the conclusion that a skilled artisan would
`have found it obvious to implement merchant validation within the processor
`and database. See Ex. 1102 ¶ 114. Although Patent Owner’s declarant opines
`that such a modification to Reber would not have been obvious (see
`Ex. 2101 ¶ 83), at this stage of the proceeding, we view conflicting
`testimonial evidence in the light most favorable to Petitioner. 37 C.F.R.
`§ 42.108(c). Petitioner and its declarant submit that a skilled artisan would
`have incorporated Franklin’s merchant validation to “improve the security of
`the Reber system” and “reduce[] fraud by merchants.” Pet. 37 (citing
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`Ex. 1102 ¶ 114). We determine that Petitioner provides adequate reason a
`skilled artisan would have modified Reber’s system to result in the claimed
`arrangement.
`As to claims 1 and 22, Patent Owner argues that Reber and Franklin
`fail to disclose that compliance with the restriction mechanism is “based on
`the indication of the provider and the time-varying multicharacter code.”
`Prelim. Resp. 47, 49 (emphasis omitted). Petitioner’s assertions regarding
`the provider depend on combination with Franklin, as discussed above. As
`for the time-varying code, Petitioner asserts further that, in Reber, access to
`account-identifying information requires validation of the time-varying code
`(which identifies the user for a transaction), satisfying that aspect of the
`claim language. Pet. 38. Separately, Petitioner asserts that a skilled artisan
`would have incorporated Franklin’s teaching of comparing received
`information to a database to determine access to a customer account number.
`Id. at 38–39 (citing Ex. 1132, 12:1–26, 12:37–33). According to Petitioner,
`artisans would have done so “to improve the security of the transaction via a
`comparison with verified data stored in the database.” Id. at 39. We
`determine that Petitioner’s assertions are sufficient at this stage of the
`proceeding.
`As to claim 37, Patent Owner challenges whether Petitioner makes the
`required showing that the prior art teaches a processor configured “to store
`an appropriate code with each such [restricted] portion of secure data.”
`Prelim. Resp. 49. Petitioner asserts that a skilled artisan “would have known
`that such validation could be performed by storing a code in the database
`and comparing it to a received code from a merchant.” Pet. 68. Based on the
`current evidence of record, we agree with Patent Owner that, even accepting
`
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`Patent 8,856,539 B2
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`that a skilled artisan knew a particular act could be performed, Petitioner
`does not show that such a person had reason to configure the system a
`particular way. Because our institution decisions may not remove claims
`from a proceeding, however, we will address the parties’ arguments on this
`claim in our final decision. See SAS Institute Inc. v. Iancu, 138 S. Ct. 1348,
`1355–56 (2018).
`
`e. Third party
`All challenged claims require that account-identifying information be
`provided to a third party to enable or deny the transaction and not be
`provided to the provider. Petitioner submits that Reber teaches forwarding
`the transaction from computer 20 to computer 64, an arrangement that would
`easily incorporate a third party. Pet. 39–40 (citing Ex. 1131, 2:52–57, 5:17–
`23). Thus, Petitioner argues, a skilled artisan would have looked to
`Franklin’s teaching to pass the user’s account-identifying information to a
`“traditional backend processing network” (and, therefore, not to the
`merchant). Id. at 40–41 (citing Ex. 1132, 12:27–33; Ex. 1102 ¶ 122).
`Petitioner reasons that skilled artisans had reason to use Franklin’s teachings
`with Reber as claimed “to ensure that the transaction data provided to the
`merchant in Reber did not contain any account identifying information, such
`as the user’s account number,” and that doing so would “protect[] the user’s
`account information from misappropriation.” Id. at 41–42 (citing Ex. 1102
`¶ 124).
`Patent Owner argues that, in Reber, account-identifying information at
`computer 64 never leaves that computer. Prelim. Resp. 51–52. Patent
`Owner’s perspective is an accurate view of Reber’s teachings, but does not
`consider Petitioner’s assertions, which are based also on Franklin’s
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`teachings. Patent Owner does not at this stage challenge Petitioner’s
`reasoning that a skilled artisan would have used Franklin’s teachings as
`asserted. See Prelim. Resp. 50–53.
`Patent Owner argues further that when Franklin teaches using a
`“traditional backend processing network,” “any account identifying
`information at the computing center 32 never leaves the computing center
`32.” Prelim. Resp. 52 (emphasis omitted). Patent Owner adds that the secure
`registry is neither the claimed third party nor controlled by the third party.
`Id. at 52–53 (citing Ex. 2101 ¶ 92). Yet Patent Owner’s proposed
`construction for “third party” does not require that the secure registry be
`controlled by an entity different from the claimed “third party.” See supra at
`5. We agreed with Patent Owner that the secure registry cannot be
`coextensive with the third party. And because Franklin’s “processing
`system 84” in the asserted combination performs functions of the claimed
`third party and not the claimed secure registry, we find it is consistent with
`our construction for “third party.”
`Accordingly, we do not agree with Patent Owner that Petitioner fails
`to show the claimed third party.
`
`III. CONCLUSION
`For the foregoing reasons, we determine the information presented in
`the Petition establishes a reasonable likelihood that Petitioner will prevail in
`showing claims 1, 22, and 38 unpatentable but does not establish a
`reasonable likelihood that Petitioner would prevail in showing claim 37
`unpatentable. Accordingly, we institute review of the challenged claims.
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`IV. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is instituted on the unpatentability of claims 1–3, 5–8, 16–24, 26–30,
`37, and 38 of U.S. Patent No. 8,856,539 B2 under 35 U.S.C. § 103(a) in
`view of Reber and Franklin; and
`FURTHER ORDERED that no other grounds are authorized for inter
`partes review; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4, notice is hereby given of the institution of a trial.
`
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`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
`
`
`20
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