Filed: March 11, 2019
`
`DOCKET NO.: 1033300-00304US3
`Filed on behalf of: Apple Inc.
`By: Monica Grewal, Reg. No. 40,056 (Lead Counsel)
`Ben Fernandez Reg. No. 55,172 (Backup Counsel)
`Kelvin Chan, Reg. No. 71,433 (Backup Counsel)
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Phone: (617) 526-6223
`Email: Monica.Grewal@wilmerhale.com
`
` Ben.Fernandez@wilmerhale.com
`
` Kelvin.Chan@wilmerhale.com
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`
`UNIVERSAL SECURE REGISTRY LLC,
`Patent owner.
`
`
`Case No. IPR2019-00727
`Patent No. 8,856,539
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,856,539
`
`
`
`DOCKET NO.: 1033300-00304US3
`Filed on behalf of: Apple Inc.
`By: Monica Grewal, Reg. No. 40,056 (Lead Counsel)
`Ben Fernandez Reg. No. 55,172 (Backup Counsel)
`Kelvin Chan, Reg. No. 71,433 (Backup Counsel)
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Phone: (617) 526-6223
`Email: Monica.Grewal@wilmerhale.com
`
` Ben.Fernandez@wilmerhale.com
`
` Kelvin.Chan@wilmerhale.com
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`
`UNIVERSAL SECURE REGISTRY LLC,
`Patent owner.
`
`
`Case No. IPR2019-00727
`Patent No. 8,856,539
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,856,539
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`Page
`INTRODUCTION ........................................................................................... 1
`A.
`Brief Overview of the ’539 patent......................................................... 2
`B.
`Brief Overview of the Prosecution History ........................................... 7
`C.
`Brief Overview of the Scope and Content of the Prior Art ................... 7
`D.
`Level of Skill in the Art ....................................................................... 12
`GROUNDS FOR STANDING ...................................................................... 13
`II.
`III. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 .................................. 13
`IV. STATEMENT OF THE PRECISE RELIEF REQUESTED FOR
`EACH CLAIM CHALLENGED ................................................................... 14
`CLAIM CONSTRUCTION ........................................................................... 15
`V.
`VI. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY BASED ON BRENER, WEISS, AND DESAI ........ 19
`i.
`Independent claim 1 .................................................................. 24
`ii.
`Independent claims 22, 37, and 38 ........................................... 41
`iii. Dependent claims ...................................................................... 48
`iv.
`Rationale to Combine ............................................................... 57
`VII. CONCLUSION .............................................................................................. 62
`VIII. CERTIFICATE OF COMPLIANCE ............................................................. 63
`IX. APPENDIX - LIST OF EXHIBITS ............................................................... 64
`
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`- i -
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`Apple Inc. (“Petitioner”) petitions for Inter Partes Review of claims 1-9, 16-
`
`31, 37, and 38 of 8,856,539 to Weiss et al. (“the ’539 patent,” Ex-1001) that issued
`
`on October 7, 2014, and is currently assigned to Universal Secure Registry LLC
`
`(“Patent Owner”). The instant petition copies verbatim the challenges set forth in
`
`the petition in IPR2018-01350 and relies upon the same evidence, including the
`
`same expert declaration, and is accompanied by a motion for joinder.
`
`I.
`
`INTRODUCTION
`This Petition demonstrates that there is a reasonable likelihood that the
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`challenged claims are unpatentable over the cited prior art. The Board has already
`
`found that there is a likelihood that these claims are unpatentable over the same
`
`grounds presented in this Petition. See Visa Inc. et al v. Universal Secure Registry
`
`LLC, PTAB-IPR2018-01350, Paper No. 7 (Feb. 11, 2019). Thus, the challenged
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`claims should be found unpatentable and canceled.
`
`The ’539 patent purports to be broadly directed to a “secure registry system”
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`involving selective access to information stored in a database, and a multicharacter
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`code corresponding to a user with information stored in the database. Ex-1001 at
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`Abstract. Embodiments of the invention disclosed by the patent involve
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`anonymous online transactions, such as online purchases where a customer’s credit
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`card number is disclosed to an authorizing financial institution but not the online
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`merchant, or where the customer’s address is revealed to a shipper but not the
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`
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`merchant. Ex-1002, ¶16. As might be expected, the field of e-commerce was rife
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`with disclosure of such systems prior to the March 2001 priority date. Id., ¶17.
`
`The ’539 patent’s requirement of a time-varying multicharacter code representing
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`an identity of a user such as a customer does not convey a point of novelty. Id.
`
`The use of such time-varying multicharacter codes to identify or authenticate a
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`user was well-known, as demonstrated by the named inventor’s own prior art
`
`patent disclosures predating the ’539 patent by well over a decade as well as other
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`prior art disclosing the use of such codes in an anonymous transaction context. Id.
`
`A. Brief Overview of the ’539 patent
`The ’539 patent is entitled “Universal Secure Registry.” Ex-1001. In a
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`general sense, the ’539 patent is directed to systems and methods for providing
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`controlled access to secure data stored on a database using a time-varying
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`multicharacter code. See, e.g., Ex-1001, Abstract, claim 1; Ex-1002, ¶14-24. The
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`secure registry system is “used to selectively provide personal, financial or other
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`information about a person to authorized users.” Ex-1001, 3:5-9.
`
`As the Background section of the ’539 patent states, “there are times when
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`the individual may wish to be identified or at least verified without providing
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`personal information.” Id., 2:17-19. Identification and authentication may occur,
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`for example, when “a person may wish to purchase goods and/or services without
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`publicly providing his/her credit card information for fear that the credit card
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`
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`information may be stolen and used fraudulently.” Id., 2:19-22; see also id., 22-27
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`(“Likewise, the person may wish to purchase goods or order goods to be delivered
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`to an address without revealing the address to the vendor.”); Ex-1002, ¶18.
`
`Patent Owner has characterized the ’539 patent as directed to “an
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`anonymous identification system that allows user verification without requiring the
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`user to share personal information with whomever is requesting verification, e.g.,
`
`allows a person to purchase goods without publicly providing credit card
`
`information to the merchant, for fear that the credit card information may be stolen
`
`or used fraudulently.” Ex-1014, 17; see also id., 19 (describing “claim 22’s
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`innovation that allows transaction approval without providing account identifying
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`information to the merchant.’”) (emphasis original). Consistent with this
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`description, the specification discloses “a system for facilitating purchases without
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`providing financial information to the merchant as set forth in FIG.8.” Ex-1001 at
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`12:19-54. As seen here in Figure 8, a user (customer) initiates a purchase and
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`provides a code to a merchant, without providing identifying information or a
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`credit card number. Id., 12:21-24. The merchant then sends the purchase request
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`
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`to the universal secure registry system
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`(USR), which uses the secret code to
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`determine the identity of the customer
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`and access credit card information
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`from a database, which it then forwards
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`to a credit card company for purchase
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`authorization. Id., 12:24-39. The
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`credit card company then processes the
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`transaction by “checking the credit
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`worthiness” of the user and notifies the
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`USR system of the result of the
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`transaction, which “in turn notifies the
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`merchant of the result of the
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`transaction.” Id., 12:40-46. In this
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`way, “the user can use the USR system to purchase goods or services from a
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`merchant without providing the merchant with the user’s credit card number.” Id.,
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`12:47-50; see also Ex-1002, ¶19.
`
`The specification explains that the user’s secret code can vary over time.
`
`Id., 8:17-47. For example, the secret code can be derived using “a SecurID card
`
`available from RSA Security,” which mathematically combines “a secret user code
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`- 4 -
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`
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`and/or time varying value” and a secret personal identification code to “generate a
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`one-time nonpredictable code” used to verify a user. Id., 8:17-35; see also Ex-
`
`1002, ¶20. Alternatively, the user’s computer may be programmed to execute an
`
`algorithm to generate “non-predictable, single use codes, which may or may not be
`
`time varying.” Id., 8:36-44; see also Ex-1002, ¶20.
`
`Claim 1 of the ’539 patent is representative of the claims at issue (additional
`
`line breaks added for readability):
`
`A secure registry system for providing information to a provider to enable
`
`transactions between the provider and entities with secure data stored
`
`in the registry system, the secure registry system comprising:
`
`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
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`time-varying multicharacter code representing an identity of one of
`
`the respective entities; and
`
`a processor configured
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`to receive a transaction request including at least the time-varying
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`multicharacter code for the entity on whose behalf a transaction
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`is to be performed and an indication of the provider requesting
`
`the transaction,
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`- 5 -
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`
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`to map the time-varying multicharacter code to the identity of the
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`entity using the time-varying multicharacter code,
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`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
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`indication of the provider and the time-varying multicharacter
`
`code of the transaction request,
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`and to allow or not allow access to the secure data associated with
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`the entity including information required to enable the
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`transaction based on the determined compliance with any
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`access restrictions for the provider, the information including
`
`account identifying information,
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`wherein the account identifying information is not provided to the
`
`provider and the account identifying is provided to a third party
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`to enable or deny the transaction with the provider without
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`providing the account identifying information to the provider.
`
`See Ex-1002, ¶21.
`The requirement “to receive a transaction request” of claim 1 relates to a
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`central concept of the ’539 patent: receiving a transaction request with a time-
`
`varying multicharacter code corresponding to the entity on whose behalf the
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`- 6 -
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`
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`transaction is to be performed. Ex-1002, ¶22. The secure registry processes the
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`transaction request received from the provider by “mapping the time-varying
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`multicharacter code to an identity of the entity using the time-varying
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`multicharacter code” and “determining compliance with any access restrictions for
`
`the provider to secure data of the entity for completing the transaction based at
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`least in part on the indication of the provider and the time-varying multicharacter
`
`code of the transaction request.” Ex-1001, cl. 1. As discussed in more detail
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`below, both the mapping of an identity to a multicharacter code and determining
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`compliance with access restrictions to maintain anonymity during a transaction as
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`claimed by the ’539 patent were well-known concepts prior to the ’539 patent. Ex-
`
`1002, ¶23-24.
`
`B.
`Brief Overview of the Prosecution History
`Application No. 11/768,729 was filed on June 26, 2007, and issued on
`
`October 7, 2014, as the ’539 patent. The ’539 patent is a continuation claiming
`
`priority benefit back to U.S. Patent Application No. 09/810,703, filed on March 16,
`
`2001, and now U.S. Patent No. 7,237,117. While the Weiss reference discussed
`
`below was disclosed to the Patent Office in an IDS during prosecution, none of the
`
`prior art references relied upon in this petition was the basis for any rejection by
`
`the Examiner.
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`C. Brief Overview of the Scope and Content of the Prior Art
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`- 7 -
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`
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`This petition is supported by the expert declaration of Dr. Justin Douglas
`
`Tygar, a professor of computer science with extensive experience in the areas of
`
`computer security and electronic commerce. Ex-1002, ¶¶1-13. As explained in
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`detail in Dr. Tygar’s declaration and addressed in further detail below, anonymous
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`transactions using multicharacter codes in place of the customer’s real information
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`were well-known prior to the alleged invention of the ’539 patent, as was the use
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`of time-varying multicharacter codes to identify or authenticate a user. Id., ¶31-40.
`
`This is illustrated in the prior art on which the current challenge is based and
`
`includes the references briefly discussed below and in further detail in Section VI.
`
`As Dr. Tygar explains, the rise of Internet-based e-commerce in the late
`
`1990s resulted in a particular focus on earning consumer trust. Ex-1002, ¶32.
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`Merchants and financial institutions had to convince customers that they could
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`safely use their credit cards and other sensitive data for online purchases without it
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`being intercepted or misused. Id. As a result, numerous systems for anonymous
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`online transactions were known prior to March 2001, many of which involved
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`storing a customer’s secure data in a remote database and selectively allowing
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`access to complete a transaction based on a multicharacter code associated with the
`
`user. Id.
`
`For example, International Application Number International PCT
`
`Application WO 00/14648 to Brener (“Brener,” submitted as Ex-1005), entitled
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`- 8 -
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`
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`“Electronic Commerce with Anonymous Shopping and Anonymous Vendor
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`Shipping,” discloses a computer-implemented method for delivering goods
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`purchased from a vendor web site without revealing the customer’s identity or
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`physical shipping address to the vendor computer. Ex-1005, Abstract; Ex-1002,
`
`¶33. As explained in Brener, “[t]he method includes associating the identity and
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`physical location of each customer with computer (100) linking information which
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`is stored at a secure computer such as a secure provider computer (110) or banking
`
`computer (150). The customer computer (100) anonymously connects to the
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`vendor web site (140) and orders goods without revealing his actual identity or
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`physical location.” Ex-1005, Abstract.
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`Another example of using a remote database for maintaining secure data and
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`controlling access to personal information for anonymous shopping was seen in
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`International PCT Application WO 01/13275 to Junda et al (“Junda,” submitted as
`
`Ex-1008), entitled “Proxy System for Customer Confidentiality.” Junda discloses
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`“a system and a method for enabling a customer (referred to herein as a ’user’) to
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`make purchases and take delivery of goods or services while keeping some or all
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`of the user’s personal information confidential and secure throughout the purchase
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`and delivery transactions.” Ex-1008 at 3:27-31. The system and method described
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`in Junda includes, for example, “generating proxy delivery data corresponding
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`with the real delivery data [and] maintaining a database including the real delivery
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`- 9 -
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`
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`data and the corresponding proxy delivery data for use in translating the proxy
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`delivery data into the corresponding real delivery data.” Id., 7:11-14; Ex-1002,
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`¶34.
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`It was also known to utilize a dynamic, time-varying multicharacter code to
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`control access to data, as evidenced by U.S. Patent No. 4,885,778 to Weiss
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`(“Weiss,” submitted as Ex-1006), entitled “Method and Apparatus for
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`Synchronizing Generation of Separate, Free Running, Time Dependent
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`Equipment.” Weiss and the ’539 patent share the same named inventor (Kenneth
`
`Weiss). Weiss is one of a number of patents directed to aspects of the well-known
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`SecurID authentication scheme. See, e.g., id., FIG. 2; Ex-1002, ¶35. The
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`apparatus and method described in Weiss “eliminates the relatively easy access
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`afforded to someone who copies or otherwise misappropriates a secret ’fixed’ code
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`by periodically generating identification codes by using fixed codes, variable data,
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`and a predetermined algorithm which is unknown in advance and unknowable
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`outside the administration of the security system even to authorized users of the
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`apparatus utilizing the fixed secret code.” Ex-1006, 1:55-62; Ex-1002, ¶35. These
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`dynamic, time-varying codes were used to replace typical instances of fixed codes
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`including card numbers, user numbers or passwords issued to customers of
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`computer data retrieval services.” Ex-1006, 1:36-40; Ex-1002, ¶35.
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`- 10 -
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`
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`Moreover, it was known prior to March 2001 that such a time-varying
`
`multicharacter code could be applied in the context of an anonymous transaction
`
`system like the ones disclosed in Brener and Junda, as evidenced by U.S. Patent
`
`Application No. 09/786,719 to Brody et al. (“Brody,” submitted as Ex-1009),
`
`entitled “Systems and Methods Enabling Anonymous Credit Transactions.” Brody
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`discloses a system and method for anonymous merchant transactions by “creat[ing]
`
`dynamic mappings of the card numbers to account numbers or other card numbers,
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`such as pseudo-random credit card numbers.” Ex-1009 at [0009]; see also Ex-
`
`1002, ¶36-37. The pseudo-random attributes are used by consumers in place of the
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`consumer’s credit card. Id. As explained by Brody, “Because pseudo-random
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`attributes are transmitted to the merchant, the transaction between the consumer
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`and merchant will be anonymous.” Ex-1009 at [0009]. The dynamic, pseudo-
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`random attributes correspond to the customer’s credit card number and other
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`personal information, and “can be used by an authentication server to authenticate
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`a transaction according to consumer preferences.” Id.; Ex-1002, ¶37.
`
`Finally, it was also known prior to the ’539 patent that a remote database
`
`could selectively grant access to personal information for online purchase
`
`transactions based on the identity of the customer and the merchant. Ex-1002, ¶38.
`
`For example, U.S. Patent Application No. 6,820,204B1 to Desai et al. (“Desai,”
`
`submitted as Ex-1007), entitled “System and Method for Selective Information
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`- 11 -
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`
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`Exchange” discloses “a system and method for information exchange that provides
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`control over the content of stored information, as well as control over the access to
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`the stored information.” Ex-1007, 3:34-37; see also Ex-1002, ¶38. Desai discloses
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`an information exchange system including facilities that allow a registered user to
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`selectively grant access to this stored profile data to one or more third parties on an
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`element-by-element basis. Ex-1007, 9:10-14. For example, a registered user can
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`grant access to its telephone number, street address, and credit card number to an
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`online vendor while only granting its telephone number to a mere business contact.
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`Id., 9:14-18; see also Ex-1002, ¶38. Junda similarly discloses that “the user may
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`select beforehand the real personal information that he or she desires to be
`
`concealed from the merchant when using the proxy credit or debit card.” Ex-1008,
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`4:28-33; Ex-1002, ¶38.
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`Other aspects and features as claimed by the ’539 patent, such as providing
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`anonymous delivery, providing bank card or credit card authorization, and using
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`secure transmission device and encryption were also known before the ’539 patent.
`
`See, e.g., Ex-1005, 2:19-3:11 (describing anonymous shipping), 8:30-9:11 (using
`
`virtual personal network protocols), 15:25-16:6 (using encryption); Ex-1008, 9:5-
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`11 (describing providing bank or credit card authorization); Ex-1002, ¶39.
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`D. Level of Skill in the Art
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`- 12 -
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`
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`As Dr. Tygar explains, a person of ordinary skill in the relevant field prior to
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`March 16, 2001, would include someone who had, through education or practical
`
`experience, 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
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`computer science field including, for example, network security systems, database
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`management, and secure transaction systems. Ex-1002, ¶¶44-46.
`
`II. GROUNDS FOR STANDING
`Petitioner certifies that, under 37 C.F.R. § 42.104(a), the ’539 patent is
`
`available for inter partes review, and Petitioner is not barred or estopped from
`
`requesting inter partes review of the ’539 patent on the grounds identified. See 37
`
`C.F.R. § 42.122(b).
`
`III. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`Real Party-in-Interest (37 C.F.R. § 42.8(b)(1)): Apple Inc. is the real parties-
`
`in-interest.
`
`Related Matters (37 C.F.R. § 42.8(b)(2)): Petitioner is aware of the
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`following matter in which the ’539 patent has been asserted: Universal Secure
`
`Registry LLC v. Apple Inc., Visa Inc., and Visa U.S.A. Inc., Case No. 17-cv-00585-
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`VAC-MPT (D. Del. May 21, 2017). The complaint was served on Petitioner on
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`July 5, 2017. Apple Inc. has filed the following petitions for CBM/IPR with
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`respect to the ’539 patent on April 12, 2018: CBM2018-00023, IPR2018-00811,
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`- 13 -
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`and IPR2018-00812. Visa Inc. and Visa U.S.A. Inc. filed a second IPR petition
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`(IPR2018-01351) based on a different prior art combination than is raised herein,
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`which was denied institution.
`
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
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`Lead Counsel: Monica Grewal (Reg. No. 40,056)
`
`Back-Up Counsel: Ben Fernandez (Reg. No. 55,172)
`
`
`
`
`
`
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`Kelvin Chan (Reg. No. 71,433)
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`Service Information - 37 C.F.R. § 42.8(b)(4). Petitioner hereby consents to
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`electronic service.
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`Email: monica.grewal@wilmerhale.com; ben.fernandez@wilmerhale.com;
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`kelvin.chan@wilmerhale.com
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`Post and hand delivery address:
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`WILMER CUTLER PICKERING HALE AND DORR
`
`60 State Street, Boston, MA 02109
`
`Telephone: (617) 526-6223
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`Facsimile: (617) 526-5000
`
`IV. STATEMENT OF THE PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`Petitioner requests review of claims 1-9, 16-31, 37, and 38 of the ’539 patent
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`under 35 U.S.C. § 311 and AIA § 6. The specific grounds for relief are as follows:
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`- 14 -
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`Ground
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`Claims
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`Description
`
`1
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`1-9, 16-31, 37,
`and 38
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`Obvious under 35 U.S.C. § 103 over Brener, Weiss, and
`Desai
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`V. CLAIM CONSTRUCTION
`A claim subject to inter partes review receives the broadest reasonable
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`construction or interpretation in light of the specification of the patent in which it
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`appears, because among other reasons, the patent owner has an opportunity to
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`amend the claims. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC. v. Lee,
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`136 S. Ct. 2131, 2142-45 (2016). However, the analysis presented herein is not
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`dependent on the broadest reasonable interpretation standard, and the bases of
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`unpatentability presented in this petition would be equally applicable under the
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`claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d 1303
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`(Fed. Cir. 2005). A few terms that warrant discussion are identified and discussed
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`below.
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`“entity”: Each of the independent claims of the ’539 patent require that
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`entities who have secure data stored in a secure registry in which each entity is
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`identified by a time-varying multicharacter code. Ex-1001, claims 1, 22, 37, 38;
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`Ex-1002, ¶¶48-49. In the context of the ’539 patent claims and specification, the
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`term “entity” means “purchasing party to a transaction who has data stored in the
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`secure registry.” This construction is consistent with the claim language, which
`
`describes the “entity” as the party to a transaction with “secure data stored in a
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`secure registry,” such as a credit card number. This construction is further
`
`supported by the ’539 patent specification, which describes an “entity” as a user, a
`
`person, or a company with information stored in the secure database. See, e.g., Ex
`
`1001, Abstract (“A secure registry system ... which permits secure access to a
`
`database containing selected data on a plurality of entities....”); see also id., 2:28-
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`31, 7:30-39, 7:63-67. The patent further uses the term “entity” to refer to the
`
`person requiring identification. Id., 3:24-27, see also id., 7:30-36; Ex-1002, ¶49.
`
`“based at least in part on the indication of the provider and the time-
`
`varying multicharacter code of the transaction request”: Independent claims 1
`
`and 22 of the ’539 patent require “determin[ing] compliance with 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.” Ex-1001, claims 1, 22;
`
`Ex-1002, ¶50. The inclusion of the phrase “based at least in part on the indication
`
`of the provider and the time-varying multicharacter code of the transaction
`
`request” as a modifier could be read to modify either “access restrictions for the
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`provider” or “completing the transaction.” Ex-1002, ¶51. As explained in further
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`detail herein, whether the “access restrictions” must be based on an indication of
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`the provider and the time-varying multicharacter code or whether the claim is
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`- 16 -
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`satisfied if “completing the transaction” is based on the indication and the code are
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`both addressed in the present petition. Id.
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`The specification only refers to an “access restriction” once, to describe an
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`access restriction for each type of data entered. Ex-1001, 10:22-27 (“For each
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`type of data entered, the person is asked to specify the type of access restrictions
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`and/or whom should be allowed to access the advanced personal data.”). However,
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`the claims do not recite access restrictions “for each type of data entered.” The
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`specification continues by describing “determining the requestor’s rights,” which
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`“typically involves validating the requestor’s identity and correlating the identity,
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`the requested information and the access information 34 provided by the person to
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`the USR database during the training process described above with respect to FIG.
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`5.” Id., 10:43-48. The specification explains that subsequent access to the
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`information may involve “validating the requestor’s identity and correlating the
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`identity, the requested information and the access information provided by the
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`person to the USR database during the training process.” Id., 10:40-48; see also
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`Ex-1002, ¶52.
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`The ’539 patent also goes on to describe embodiments in which application
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`of the access restrictions does not involve consideration of access information
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`provided during the training process (i.e., a designation by the user as to which
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`parties may access specific types of information). For example, the specification
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`- 17 -
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`discloses that a merchant may send “(1) the code from the electronic ID, (2) the
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`store number, and (3) the amount of the purchase” to the universal secure registry
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`system, which when provides access to the relevant credit card number based
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`solely on a determination whether “the [electronic ID] code is valid.” Id., 12:19-
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`31; see also id., 11:49-65, 12:55-13:8, 13:35-57 (describing various types of
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`transactions, each basing access to information on determination whether user’s ID
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`code is valid); Ex-1002, ¶53.
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`In view of the various embodiments disclosed by the ’539 patent, as well as
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`the plain language of the claim itself, the “based at least in part on an indication of
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`the provider and the time-varying multicharacter code of the transaction request”
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`clause should be read to modify the element that immediately precedes it:
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`“completing the transaction,” i.e., that completion of the transaction is based on the
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`indication and time-varying multicharacter code. See Ex-1002, ¶ 54. However, to
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`the extent that Patent Owner argues the access restrictions themselves must be
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`based on the indication of the provider and the time-varying multicharacter code,
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`the petition demonstrates that this too would have been obvious in view of the
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`prior art. As discussed in more detail below, the challenged claims are
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`unpatentable under either interpretation of this limitation. Id.
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`- 18 -
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`VI. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY BASED ON BRENER, WEISS, AND DESAI
`Each and every feature of claims 1-9, 16-31, 37, and 38 of the ’539 patent
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`would have been obvious to a person of ordinary skill in the art in view of Brener,
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`Desai, and Weiss. See Ex-1002, ¶¶57-179. Brener, published on March 16, 2000,
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`filed September 3, 1999, and claiming priority to an application filed September 4,
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`1998, is qualified as a prior art printed publication under 35 U.S.C. §§ 102(a) and
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`102(e). Weiss, issued December 5, 1989, is qualified as a prior art printed
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`publication under 35 U.S.C. § 102(b). Desai, issued November 16, 2004, filed
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`March 31, 2000, and claiming priority to a provisional application filed on March
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`31, 1999, is qualified as a prior art printed publication under 35 U.S.C. § 102(e).
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`Brener discloses “a method and system of conducting electronic commerce
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`which allows a customer to anonymously visit vendor web sites, anonymously
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`purchase goods and anonymously receive goods without disclosing the customer’s
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`identification and home address information to the web site vendor.” Ex-1005,
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`1:6-9. The anonymous shopping system in Brener associates the customer’s
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`personal information, such as the customer’s identity and address, with a respective
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`customer object. Id., 2:24-25; 3:13-14; Ex-1002, ¶58. The customer object can be
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`represented by a name (such as “GOLFO”) and is matched to the customer’s
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`personal information by linking information stored in a linking table on a secure
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`computer at a location remote from the vendor web site so as to shield the linking
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`- 19 -
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`information from third parties, including the vendor. Ex-1005, 8:9-14, 10:28-11:2,
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`2:25-26, 3:14-15, 8:16-18; see also id., 15:13-10; Ex-1002, ¶58. To complete a
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`transaction, Brener provides that the customer anonymously connects to the vendor
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`web site using the customer object without revealing the identity and physical
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`location of the customer. Ex-1005, 2:27-29; Ex-1002, ¶58. Once connected, the
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`customer can order goods (Ex-1005, 2:29-30), the vendor encodes the ordered
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`goods with the transaction identifier (id., 3:1-2), and then the vendor sends the
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`transaction identifier together with the customer object to the secure provider (id.,
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`3:2-4). Ex-1002, ¶59. The secure provider then associates the transaction
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`identifier sent by the vendor computer with the identity and physical address of the
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`customer at the secure computer using the linking information and forwards the
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`transaction identifier and associated identity and physical address of the customer
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`to a computer of a common carrier. Ex-1005, 3:4-7; Ex-1002, ¶59. The common
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`carrier then uses the identity and the physical location of the customer associated
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`with the transaction identifier and delivers the package to the customer. Ex-1005,
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`3:9-11; Ex-1002, ¶59. Thus, the purchase transaction is completed upon shipment
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`and delivery of the goods to the customer. See, e.g., Ex-1005, Fig. 2. The
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`disclosed method is also depicted in Figure 2:
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`- 20 -
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`Brener also provides that the above methods further comprise sending
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`information representing the cost of the goods ordered by the customer and the
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`customer object from the vendor computer to a financial institution computer via
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`the computer network for credit approval. Id., 3:25-30; Ex-1002, ¶60. When
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`processing transaction requests, the system described in Brener provides for
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`selective access to the user’s personal information based on the role of the third
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`party provider. For example, the common carrier is given access to the shipping
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`address while the vendor is not. Ex-1005, 10:3-20; Ex-1002, ¶61. Alternatively,
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`- 21 -
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`the financial institution may get access to the account number while the vendor
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`does not. Ex-1005, 14:23-26; Ex-1002, ¶61.
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`While Brener discloses identifying a customer using a multicharacter code
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`“customer object” associated with the customer’s personal information, such as the
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`customer’s name and physical address, it does not expressly disclose that the
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`multicharacter code is time-varying. Ex-1002, ¶62. However, this aspect of the
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`’539 patent claims would have been obvious in view of Weiss. Id. Weiss is
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`directed to “periodically generating identification codes by using fixed codes,
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`variable data, and a predetermined algorithm which is unknown in advance and
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`unknowable outside the administrati
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