Paper No. ___
`Filed: April 2, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________
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`VISA INC., VISA U.S.A. INC., and
`APPLE INC.,
`Petitioners,
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`v.
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`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`_____________________________
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`Case IPR2018-013501
`Patent No. 8,856,539
`__________________________
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`PETITIONERS’ NOTICE OF APPEAL
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`1 Apple Inc., which filed a petition in IPR2019-00727, has been joined as a
`party to this proceeding.
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`Filed: April 2, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________
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`VISA INC., VISA U.S.A. INC., and
`APPLE INC.,
`Petitioners,
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`v.
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`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`_____________________________
`
`Case IPR2018-013501
`Patent No. 8,856,539
`__________________________
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`PETITIONERS’ NOTICE OF APPEAL
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`1 Apple Inc., which filed a petition in IPR2019-00727, has been joined as a
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`Pursuant to 37 C.F.R. § 90.2(a) and 35 U.S.C. §§ 141(c), 142, and 319, Visa
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`Inc., Visa U.S.A. Inc. , and Apple Inc. (“Petitioners”) respectfully give notice that
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`they appeal to the United States Court of Appeals for the Federal Circuit from the
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`Patent Trial and Appeal Board’s Final Written Decision entered on January 30,
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`2020 (Paper 35), and from all other underlying orders, decisions, rulings, and
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`opinions.
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`For the limited purpose of providing the Director of the United States Patent
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`and Trademark Office with the information specified in 37 C.F.R. § 90.2(a)(3)(ii),
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`the issues on appeal include, but are not limited to, whether the Patent Trial and
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`Appeal Board erred in determining that claims 1-4, 9, 16, 21-25, 31, 37, and 38 of
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`U.S. Patent No 8,856,539 B2 were not shown to be unpatentable in view of the
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`grounds of unpatentability on which trial was instituted (Paper 7). The issues on
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`appeal may also include any finding or determination supporting or related to these
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`issues, as well as all other issues decided adversely to Petitioners in any orders,
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`decisions, rulings, or opinions.
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`Pursuant to 37 C.F.R. § 90.3, this Notice of Appeal is timely, having been
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`duly filed within 63 days after the date of the Final Written Decision.
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`Simultaneous with this filing and in accordance with 37 C.F.R. § 90.2(a)(1),
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`this Notice of Appeal is being filed with the Director and served on Patent Owner
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`in accordance with 37 C.F.R. § 42.6(e). This Notice of Appeal, along with the
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`required fees, is also being filed with the Clerk’s Office for the United States Court
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`of Appeals for the Federal Circuit in accordance with Fed. Cir. R. 15(a)(1).
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`Respectfully Submitted,
`/ Matthew A. Argenti /
`Matthew A. Argenti
`Reg. No. 61,836
`WILSON SONSINI
`GOODRICH & ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304
`Tel: (650) 354-4154
`Fax: (650) 493-6811
`margenti@wsgr.com
`Attorney for
`Visa Inc. and Visa U.S.A. Inc.
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`Respectfully Submitted,
`/ Monica Grewal /
`Monica Grewal
`Reg. No. 40,056
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`60 State Street
`Boston, MA 02109
`Tel: (617)526-6223
`Fax: (617)526-5000
`Moncia.Grewal@wilmerhale.com
`Attorney for Apple. Inc.
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`Dated: April 2, 2020
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`Dated: April 2, 2020
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`CERTIFICATES OF FILING AND SERVICE
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`I hereby certify that, in addition to being filed electronically through the
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`Patent Trial and Appeal Board’s End to End system, the foregoing Notice of
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`Appeal was filed by Express Mail on this 2nd day of April, 2020, with the Director
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`of the United States Patent and Trademark Office, at the following address:
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`Director of the U.S. Patent and Trademark Office
`c/o Office of the General Counsel
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`I hereby certify that a true and correct copy of the foregoing Notice of
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`Appeal was filed electronically by CM/ECF on this 2nd day of April, 2020, with
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`the Clerk’s Office of the United States Court of Appeals for the Federal Circuit.
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served a true and
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`correct copy of the foregoing Notice of Appeal on the Patent Owner at the
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`electronic service addresses of the Patent Owner as follows:
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`-3-
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`James Glass
`Tigran Guledjian
`Christopher Mathews
`Nima Hefazi
`Richard Lowry
`Razmig Messerian
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`jimglass@quinnemanuel.com
`tigrangulejian@guinnemanuel.com
`chrismathews@quinnemanuel.com
`nimahefazi@quinnemanuel.com
`razmesserian@quinnemanuel.com
`qe-usr-ipr@quinnemanuel.com
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`Dated: April 2, 2020
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`/ Matthew A. Argenti /
`Matthew A. Argenti
`Reg. No. 61,836
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`Trials@uspto.gov
`571-272-7822
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`Paper 35
`Date: January 30, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`VISA INC., and VISA U.S.A. INC., and
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`____________
`
`IPR2018-013501
`Patent 8,856,539 B2
`____________
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
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`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
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`
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`1 Apple Inc., which filed a petition in IPR2019-00727, has been joined as a
`party to this proceeding.
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`
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`IPR2018-01350
`Patent 8,856,539 B2
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`
`INTRODUCTION
`I.
`A. BACKGROUND AND SUMMARY
`Petitioner, Visa Inc. and Visa U.S.A. Inc., filed a Petition (Paper 2,
`“Pet.”) requesting inter partes review of claims 1–9, 16–31, 37, and 38 of
`U.S. Patent No. 8,856,539 B2 (Ex. 1001, “the ’539 patent”). Patent Owner,
`Universal Secure Registry, LLC, filed a disclaimer of claims 5–8, 17–20,
`and 26–30. Ex. 2003. Thus, claims 1–4, 9, 16, 21–25, 31, 37, and 38 (“the
`challenged claims”) remain challenged in this proceeding.2 Patent Owner
`timely filed a Preliminary Response. Paper 6. We instituted review. Paper 7
`(“Inst.” or “Institution Decision”).
`Patent Owner filed a Response (Paper 12 (“PO Resp.”)) and a
`Conditional Motion to Amend (Paper 13); Petitioner filed a Reply (Paper 16
`(“Pet. Reply”)) and an Opposition to Patent Owner’s Conditional Motion to
`Amend (Paper 17); Patent Owner filed a Sur-Reply (Paper 21
`(“PO Sur-Reply”)) and a Reply to Petitioner’s Opposition (Paper 20); and
`Petitioner filed a Sur-Reply to the Conditional Motion to Amend (Paper 24).
`We held a hearing on November 21, 2019, and a transcript is included in the
`record. Paper 34 (“Tr.”).
`This is a final written decision as to the patentability of the challenged
`claims. For the reasons discussed below, we determine that Petitioner has
`not shown by a preponderance of the evidence that any of the challenged
`claims is unpatentable.
`
`
`2 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on
`disclaimed claims.”); Vectra Fitness, Inc. v. TWNK Corp., 162 F.3d 1379,
`1383–84 (Fed. Cir. 1998) (holding a disclaimer under § 253 removes a
`claim from the original patent for all purposes).
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`2
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`B. 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. 12–13; Paper 4 (Patent Owner’s Mandatory
`Notices).
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`C. 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,
`code (54), 3:5–9. The ’539 patent discloses that the 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 code (57).
`The challenged patent describes a secure database called a “Universal
`Secure Registry” (“USR”), 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 the ’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. In one regard, the USR may restrict
`access to information based on the identity of the party requesting the
`information. Id. at 10:40–57.
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`3
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`Patent 8,856,539 B2
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`The ’539 patent describes an embodiment in which a user may use an
`electronic ID device to generate a code that a merchant passes on to the USR
`along with purchase information. Id. at 12:19–54. If the USR correctly
`validates the code, it may in turn pass transaction information to a credit-
`card company to facilitate the transaction. Id. at 12:27–46.
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`ILLUSTRATIVE CLAIMS
`D.
`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:
`[1.1] 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
`[1.2] 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,
`[1.3] to map the time-varying multicharacter code to the
`identity of the entity using the time-varying
`multicharacter code,
`[1.4] 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
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`4
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`Patent 8,856,539 B2
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`[1.5] 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,
`[1.6] 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, 18:29–60.3
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`E. PRIOR ART AND ASSERTED GROUND
`Petitioner asserts that all challenged claims are unpatentable under
`35 U.S.C. § 103 as obvious over a combination of Brener,4 Weiss,5 and
`Desai.6 Pet. 13–14. Petitioner also relies on the Declaration of Dr. Douglas
`Tygar (Ex. 1002). See Pet. 7.
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`II. ANALYSIS
`A. LEVEL OF ORDINARY SKILL IN THE ART
`Petitioner submits that a person of skill in the art at the time of
`invention for the ’539 patent would possess
`
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`3 We add formatting and square-bracketed annotations to separate claim
`limitations as identified by the parties. See Pet. 26–39. Our formatting and
`annotations imply no functional or structural aspect of the claim beyond
`identifying limitations for discussion.
`4 PCT Pub. App. WO 00/14648 (pub. Mar. 16, 2000) (Ex. 1005).
`5 U.S. Pat. No. 4,885,778 (iss. Dec. 5, 1989) (Ex. 1006).
`6 U.S. Pat. No. 6,820,204 B1 (iss. Nov. 16, 2004) (Ex. 1007).
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`the equivalent of a bachelor’s degree in computer science or
`computer engineering or a related field and at least an
`additional two years of work in the computer science field
`including, for example, network security systems, database
`management, and secure transaction systems.
`Pet. 12 (citing Ex. 1002 ¶¶ 44–46). Patent Owner submits that the level of
`skill would involve
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`a Bachelor of Science degree in electrical engineering and/or
`computer science, and three years of work or research
`experience in the fields of secure transactions and encryption,
`or a Master’s degree in electrical engineering and/or computer
`science and two years of work or research experience in related
`fields.
`PO Resp. 11–12 (citing Ex. 2004 ¶ 16). Patent Owner agrees that its
`“description of the level of ordinary skill in the art is essentially the same as
`that of the Petitioner, except that Petitioner’s description requires two years
`of work in the computer science field.” Id. at 12. We do not understand any
`of the parties’ disputes to turn on a precise definition of the level of skill in
`the art and apply the level of skill as defined by the parties.
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`B. CLAIM CONSTRUCTION
`In a Board proceeding based on a petition filed before November 13,
`2018, as here, claims in an unexpired patent are interpreted according to
`their broadest-reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b) (2018); Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).7 Under that standard,
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`7 A recent amendment to this rule does not apply here because the Petition
`was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
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`6
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`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).
`Petitioner proposes constructions for two terms in the ’539 patent:
`“entity” and “based at least in part on the indication of the provider and the
`time-varying multicharacter code of the transaction request.” Pet. 14–17.
`Patent Owner asserts that “entity” requires no construction, that we should
`adopt our construction of Petitioner’s “based at least in part on” phrase from
`the Institution Decision (see Inst. 7–9), and that we should construe “third
`party” and “the provider requesting the transaction.” PO Resp. 12–21.
`In light of our conclusion below that Petitioner fails to show claim
`element [1.6] was taught by the prior art (see infra at 9–15), we need not
`address the constructions for any of the proposed terms, as none would
`change our conclusion.8 See Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 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).
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`(amending 37 C.F.R. § 42.100(b), effective Nov. 13, 2018) (codified at 37
`C.F.R. § 42.100(b) (2019)).
`8 Although claim element [1.6] uses the terms “account identifying
`information” and “third party,” Patent Owner does not dispute Petitioner’s
`identification of account identifying information or a third party in each of
`its alternative mappings. Instead, Patent Owner disputes other aspects of
`Petitioner’s showing for element [1.6]. See PO Resp. 22–25.
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`C. OBVIOUSNESS OVER BRENER, WEISS, AND DESAI
`For its contentions, Petitioner relies on Brener as modified by both
`Weiss and Desai. See Pet. 17–24.
`Brener discloses “a method and system of conducting electronic
`commerce which allows a customer to anonymously visit vendor web sites,
`anonymously purchase goods and anonymously receive goods without
`disclosing the customer’s identification and home address information to the
`web site vendor.” Ex. 1005, 1:6–9. Brener’s system uses linking information
`to associate a customer’s personal information with a customer object. Id. at
`2:24–25, 3:12–14. By storing the linking information and personal
`information on a secure computer, Brener permits the customer to interact
`with vendors using just the customer object. Id. at 2:27–29. When a vendor
`desires to complete a purchase by a customer, it may send the customer
`object to a bank, which then interacts with the secure computer to obtain the
`required personal information for completing the purchase. Id. at 9:16–29.
`Brener further discloses a method for a vendor to ship a package without
`obtaining the customer’s personal information, in which the third-party
`shipper uses the customer object to obtain delivery information. Id. at 10:3–
`20.
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`Weiss discloses:
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`an apparatus and method for the electronic generation of
`variable, non-predictable codes and the validation and
`comparison of such codes for the purpose of positively
`identifying an authorized individual or user of an apparatus or
`system and thereafter giving clearance to carry out a privileged
`transaction or access to a protected system or facility.
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`8
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`Ex. 1006, 1:15–21. Weiss summarizes that its “predetermined algorithm
`constantly generates new unique and verifiable non-predictable codes, which
`are derived from the fixed data and at least one dynamic variable, such as the
`time of day.” Id. at 1:63–67.
`Desai discloses “a system and method for information exchange that
`provides control over the content of stored information, as well as control
`over the access to the stored information.” Ex. 1007, 3:34–37. To that end,
`Desai discloses an “information exchange system” that stores profile data for
`users. Id. at 3:42–45. Using the system, a user “can securely control access
`to its stored profile data on an element-by-element and user-by-user basis.”
`Id. at 9:4–6. Desai’s system uses a “universal ID for each data element” to
`control access on an element-by-element basis. Id. at 14:5–8. Thus, using
`Desai’s system, a “registered user 12 has control over which vendors 24
`have access to its profile data, and which subsets of the profile data are
`provided to those vendors 24.” Id. at 9:55–57.
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`1. Claim 1
`Claim element [1.6] recites
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`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, 18:55–60. Petitioner asserts Brener teaches this limitation through
`two separate disclosures. Pet. 39–40.
`a. Brener’s shipping carrier
`First, Petitioner asserts that Brener discloses providing information
`“to a third party shipping carrier to complete the purchase transaction by
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`shipping the purchased goods.” Id. (citing Ex. 1005, 14:28–15:10; Ex. 1002
`¶ 96). Patent Owner contests Petitioner’s claim mapping, arguing that
`Brener’s shipping carrier cannot be the “third party” because the carrier is
`not involved until a transaction is approved. PO Resp. 22–23. We agree with
`Patent Owner, based on Brener’s disclosures. Ex. 1005, 10:3–4 (“Once a
`purchase by the customer has been approved, the vendor arranges for the
`package to be picked up by a third party carrier.”), 14:20–22 (“Upon
`approval of the transaction, the vendor readies the goods for anonymous
`shipment as explained below.”).
`Petitioner takes the position that “to enable transactions” has a
`meaning broader than just the financial part of a transaction, and includes
`shipping goods. Pet. Reply 6–7. Petitioner argues also that, even if a
`financial institution approves a transaction, a shipper may nonetheless also
`enable the transaction. Id. at 7. To that end, Petitioner points to the
`Specification’s statements that, for example, the invention “enables”
`receiving packages without the sender having access to the recipient’s
`address. Id. at 7–8 (citing Ex. 1001, 3:31–41, 3:44–50, 4:61–65, 13:28–14:3,
`14:4–58). None of those examples, however, states that the shipper enables
`or denies the transaction at issue. Instead, they use “enable” in a more
`general sense, and we decline to contort the claim based on that general
`usage in the Specification.
`Additionally, the claim language recites that the third party may
`“enable or deny the transaction with the provider.” While Petitioner argues
`that the claim requires only one—either enabling or denying (see Tr. 11:4–
`13)—that view of the claim would deprive the limitation of meaning because
`“to enable or deny” expresses a binary choice and Petitioner’s view glosses
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`over that choice. Providing information to a third party “to enable or deny
`the transaction” means that the information allows the third party to make a
`choice about whether the transaction proceeds. Petitioner asserts that a
`shipping carrier (Petitioner’s asserted third party) “could refuse to provide
`shipping,” thus satisfying any requirement that the third party be able to
`deny the transaction. Tr. 11:14–22. We do not agree, as such behavior by the
`shipper is speculative and not based on Brener’s disclosures. See PO Sur-
`Reply 4 (arguing Brener fails to disclose that the shipper may deny a
`transaction).
`For the foregoing reasons, we find that the claim language does not
`read on Brener’s disclosure of sending confidential customer information to
`a shipping carrier.
`b. Brener’s third-party financial institution
`Petitioner asserts alternatively that Brener discloses providing
`customer identity and account information “to a third party financial
`institution or bank computer by the secure provider to complete the purchase
`transaction by approving or denying a transaction.” Pet. 40 (citing Ex. 1005,
`9:19–10:2; Ex. 1002 ¶ 97). In this regard, Petitioner relies on Brener’s
`disclosures that “the vendor computer 140 forwards the customer object to
`the bank computer” and “[t]he bank computer 150 obtains or is already
`provided with the linking information to link the customer object with
`personal information about the customer, including customer account
`information.” Ex. 1005, 9:23–26.
`Petitioner’s mapping between the claim language and Brener’s
`disclosures suffers from a significant inconsistency. In element [1.3], the
`claim requires the secure-registry processor be configured “to map the time-
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`varying multicharacter code to the identity of the entity using the time-
`varying multicharacter code.” Petitioner asserts Brener teaches that element
`by disclosing the secure provider using a linking table to match a customer
`object (containing the claimed code) with the customer’s personal
`information. Pet. 32 (citing Ex. 1005, 2:19–3:7, 8:11–20, 10:14–17). Thus,
`Petitioner’s assertions for element [1.3] require the secure provider use the
`linking table. In contrast, for element [1.6], Petitioner relies on Brener’s
`description of sending the linking table to a third-party bank so that it may
`link the customer object with the customer’s personal information after
`receiving the customer object from the vendor. Pet. 39 (quoting Ex. 1005,
`9:19–10:2), 40 (same). Stated plainly, Petitioner’s assertions require a
`system configured to use the linking information both at Brener’s secure
`provider and also at its third-party bank. Brener does not suggest that one
`configure a system in such a manner and doing so would not make sense. If
`the linking information were used at the third-party bank, there would be no
`need to also use it at the secure provider, and vice versa.
`When questioned on this aspect of the mapping for element [1.6],
`Petitioner asserted that Brener provides multiple options and does not
`present discrete embodiments. Tr. 14:7–16:18. But Brener’s lack of
`precision cannot squelch or satisfy a plain requirement of the claims. The
`claims recite that the secure registry maps a code to an entity’s identity
`(element [1.3]) and also that account-identifying information is provided to a
`third party (element [1.6]). Brener describes using linking information to
`obtain personal customer information including account information from a
`customer object, and it describes that the linking information may be used at
`the secure registry or provided to a third-party bank so the bank may obtain
`
`12
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`IPR2018-01350
`Patent 8,856,539 B2
`
`personal customer information. Petitioner has not identified why a person of
`skill would have read Brener to disclose using the linking information in
`both places—at the secure registry and also at the third-party bank. Thus,
`Petitioner’s assertions for element [1.3] and those for element [1.6] based on
`the third-party bank are not consistent. See Tr. 51:24–52:25.
`Petitioner asserts also that, for element [1.6], it does not rely
`exclusively on Brener’s description of the secure registry sending linking
`information to the third-party bank, but also relies on Brener’s description of
`the secure registry sending account-identifying information to the third-party
`bank. Tr. 16:20–17:4. Patent Owner, in response, asserts that the Petition
`fails to assert that aspect of Brener against element [1.6]. Id. at 51:3–22.
`Petitioner points to certain portions of the Petition that it believes raised
`Brener’s disclosure of the secure provider sending account-identifying
`information (not just linking information) to the third-party bank. Id. at
`56:15–58:7 (identifying Pet. 49–50 (discussing dependent claims 5 and 26;
`citing Ex. 1005, 8:3–20, 10:28–11:10), 53 (discussing dependent claim 16),
`18. The portions Petitioner identifies, however, do not convince us that the
`Petition sufficiently identified the disputed aspect of Brener’s disclosures.
`Identifying a portion of Brener as relevant to a dependent claim does not
`adequately set forth the contention at issue. Moreover, in that discussion, the
`Petition asserts that “the secure provider database may be used by either a
`bank computer or credit card company computer to identify the customer.”
`Pet. 50 (emphasis added). That assertion does not indicate that the secure
`registry uses its database and then sends account-identifying information to
`the bank or credit card company, it indicates, as with the assertion against
`element [1.6], that the third party performs the lookup. While the Petition
`
`13
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`IPR2018-01350
`Patent 8,856,539 B2
`
`also quotes language that the secure provider can provide a bank computer
`with an account number (id. (quoting Ex. 1005, 10:28–11:10)), without any
`discussion explaining an assertion that relies on such a configuration, we do
`not read the Petition as raising the mapping Petitioner now asserts.
`The general discussion of Brener identified by Petitioner on page 18
`of the Petition also does not support Petitioner’s current assertion. That
`general discussion relates to the secure provider mapping from a customer
`object to account-identifying information, but other than as relates to a
`shipper (common carrier), does not further discuss the secure provider
`sending the information to a third party bank. See Pet. 18–21. At most, that
`discussion asserts that “the financial institution may get access to the
`account number” but does not detail the mechanism from Brener on which
`Petitioner relies. See Pet. 21.
`Petitioner’s Reply confirms our view of its assertions, where
`Petitioner asserts that the secure provider “provides account identifying
`information to the bank via the linking table stored in the database of the
`secure provider computer.” Pet. Reply 11. That assertion continues to rely
`on the secure provider sending the linking information, as opposed to
`sending account-identifying information such as an account number directly.
`We conclude that the Petition does not raise the mapping on which
`Petitioner now relies. While sending the linking information to a third-party
`bank may satisfy element [1.6] in the abstract, it creates a discontinuity with
`Petitioner’s mapping of element [1.3].
`
`14
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`IPR2018-01350
`Patent 8,856,539 B2
`
`
`c. Conclusion
`For both reasons discussed above, we conclude Petitioner has not
`shown unpatentability of claim 1 over Brener, Weiss, and Desai by a
`preponderance of the evidence.
`
`2. Claims 22, 37, and 38
`Independent claims 22, 37, and 38 recite limitations similar to those of
`claim 1, including the requirements discussed above regarding claim 1
`elements [1.3] and [1.6]. Because Petitioner relies on the same disclosures of
`Brener as for claim 1, Petitioner’s assertions against claims 22, 37, and 38
`suffer from the same deficiencies discussed above.
`Accordingly, we conclude that Petitioner has not shown
`unpatentability of claim 22, 37, or 38 over Brener, Weiss, and Desai by a
`preponderance of the evidence.
`
`3. Dependent claims
`Because all other challenged claims depend directly or indirectly from
`one of the independent claims, our conclusion that Petitioner has failed to
`carry its burden for the independent claims applies also to the dependent
`claims.
`
`D. PATENT OWNER’S CONDITIONAL MOTION TO AMEND
`Patent Owner filed a Conditional Motion to Amend. Paper 21.
`Because we conclude that Petitioner has not proven any claim unpatentable,
`we do not reach Patent Owner’s Motion and therefore dismiss it as moot.
`
`E. PATENT OWNER’S MOTION TO STRIKE
`Patent Owner filed a Motion to Strike certain evidence and argument
`associated with Petitioner’s Sur-Reply to Patent Owner’s Conditional
`
`15
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`IPR2018-01350
`Patent 8,856,539 B2
`
`Motion to Amend. Paper 39. Because we do not reach Patent Owner’s
`Conditional Motion to Amend, Patent Owner’s Motion to Strike is moot and
`we dismiss it as such.
`
`III. CONCLUSION
`For the reasons discussed above, we conclude Petitioner has not
`proven any of the challenged claims unpatentable over the prior art of
`record.
`In summary:
`35
`U.S.C.
`§
`
`Reference(s)/Basis
`
`Claims
`Shown
`Unpatentable
`
`Claims
`Not Shown
`Unpatentable
`1–4, 9, 16,
`21–25, 31, 37,
`38
`
`Claims
`
`1–4, 9,
`16, 21–
`25, 31,
`37, 38
`
`
`103
`
`Brener, Weiss,
`Desai
`
`
`
`Motion to Amend Outcome
`Original Claims Cancelled by Amendment
`Substitute Claims Proposed in the
`Amendment
`Substitute Claims: Not Reached
`
`Claims
`
`
`1–4, 9, 16, 21–25, 31, 37,
`38
`1–4, 9, 16, 21–25, 31, 37,
`38
`
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that claims 1–4, 9, 16, 21–25, 31, 37, and 38 of U.S.
`Patent No. 8,856,539 B2 are not determined to be unpatentable;
`FURTHER ORDERED that Patent Owner’s Conditional Motion to
`Amend is dismissed;
`
`16
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`IPR2018-01350
`Patent 8,856,539 B2
`
`
`FURTHER ORDERED that Patent Owner’s Motion to Strike is
`dismissed; and
`FURTHER ORDERED that, because this is a Final Written Decision,
`parties to the proceeding seeking judicial review of the decision must
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`
`
`
`PETITIONER:
`Matthew A. Argenti
`Michael T. Rosato
`WILSON SONSINI GOODRICH & ROSATI
`margenti@wsgr.com
`mrosato@wsgr.com
`
`
`PATENT OWNER:
`
`James M. Glass
`Tigran Guledjian
`Christopher Mathews
`Nima Hefazi
`Richard Lowry
`Razmig Messerian
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`jimglass@quinnemanuel.com
`tigranguledjian@quinnemanuel.com
`chrismathews@quinnemanuel.com
`nimahefazi@quinnemanuel.com
`richardlowry@quinnemanuel.com
`razmesserian@quinnemanual.com
`
`
`17
`
`
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