UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Ingenico Inc.,
`
`Petitioner
`
`v.
`
`IOENGINE, LLC,
`
`Patent Owner
`
`____________
`
`Case IPR2019-00879
`U.S. Patent No. 9,059,969
`____________
`
`PETITIONER’S REPLY
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Ingenico Inc.,
`
`Petitioner
`
`v.
`
`IOENGINE, LLC,
`
`Patent Owner
`
`____________
`
`Case IPR2019-00879
`U.S. Patent No. 9,059,969
`____________
`
`PETITIONER’S REPLY
`
`
`
`II.
`
`Table of Contents
`Table of Authorities ................................................................................................ iii
`Exhibit List for Inter Partes Review of U.S. Patent No. 9,059,969 ..................... iv
`I.
`CLAIM CONSTRUCTION ......................................................................... 1
`A. “interactive user interface” ..................................................................... 1
`1. “Presentation” and “computer” are more particularly
`specified in the claims of the ’969 patent .......................................... 1
`2. Interactive does not require “interface elements” ............................ 3
`B. “communicate through” .......................................................................... 4
`IIDA ANTICIPATES ................................................................................... 5
`A. In Iida, the user interacts with the display ............................................ 5
`B. Iida discloses cursors and interactively changing menus ..................... 6
`C. Although Not Required by the Claims, Iida Discloses
`Interaction Interface Elements ............................................................... 7
`D. Although Not Required by the Claims, the Iida Terminal
`Iida Responds to User Inputs .................................................................. 8
`E. “Communicate Through” ........................................................................ 8
`F. “Second Program Code” and “third program code”............................ 9
`III. CLAIM 3 – IDENTIFYING INFORMATION ........................................ 11
`IV. CLAIM 4 – COMMUNICATION CONTENT ........................................ 12
`V. CLAIMS 5-8, 10-11 – DATABASE ................................................................. 15
`VI. CLAIM 7 –PROGRAM CODE AS CONTENT .......................................... 15
`VII. CLAIM 10 – FACILITATE SYNCHRONIZATION ................................ 17
`IX. CLAIM 16 – NAME AS CONTENT ............................................................. 17
`
`i
`
`
`
`X. CLAIM 21- GRAPHIC USER INTERFACE ................................................ 19
`XI. IIDA AND FUJI GUIDE ................................................................................ 21
`A. Printed Publication ................................................................................ 21
`B. Motivation to Combine .......................................................................... 22
`C. The Combination .................................................................................... 24
`XII. IIDA AND SHAFFER RENDER CLAIM 4
`UNPATENTABLE ...................................................................................... 25
`XIII. CONSTITUTIONAL ISSUES ................................................................... 26
`XIV. CONCLUSION ............................................................................................ 26
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ii
`
`
`
`
`
`
`
`Table of Authorities
`
`Cases
`Arthrex, Inc. v. Smith & Nephew, Inc., et al., 941 F.3d 1320 (Fed. Cir.
`2019) .................................................................................................................... 26
`AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1065 (Fed.Cir. 2010) ................. 18
`Celgene Corp. v. Peter, 931 F.3d 1342, 1358-63 (Fed. Cir. 2019) ......................... 26
`Ex parte ePlus, Inc., 2011 WL 1918594 (BPAI 2011) ........................................... 22
`Ex parte Nehls, 88 U.S.P.Q.2d 1883, 1889 (BPAI 2008) ...................................... 14
`In re Distefano, 808 F. 3d 845, 848 (Fed.Cir. 2005) ................................... 12, 13, 14
`In re Gulack, 703 F.2d 1381, 1386 (Fed. Circ. 1983) ............................................. 18
`In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994) ............................................................ 13
`In re Ngai, 367 F.3d 1336, 1339 (Fed.Cir. 2004) ................................................... 18
`In re Nuijten, 500 F.3d 1346, 1365 (Fed. Circ. 2007) ............................................. 13
`Nehls, 88 U.S.P.Q.2d at 1888 .................................................................................. 16
`OSI Pharm., LLC v. Apotex, Inc., 939 F.3d 1375, 1385-86 (Fed. Cir.
`2019) .................................................................................................................... 26
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). .......................................... 4
`Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prod. IP Ltd., 890 F.3d
`1024, 1032 (Fed. Cir. 2018) ................................................................................. 17
`SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed.
`Cir. 2008) ............................................................................................................. 21
`Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353 (Fed. Cir. 2016) ....................... 4
`
`
`
`iii
`
`
`
`
`
`Exhibit List for Inter Partes Review of U.S. Patent No. 9,059,969
`Exhibit #
`Brief Description
`1001
`
`U.S. Patent No. 9,059,969 (McNulty) (filed Aug. 6, 2013; issued
`June 16, 2015)
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`Declaration of James T. Geier
`
`US2003/0020813 (Iida), published January 30, 2003
`
`FujiFilm Software Quick Start Guide, published at least as early as
`June 2001
`
`Declaration of Paul Widener
`
`U.S. Patent No. 5,784,461 (Shaffer), issued July 21, 1998
`
`Ford, Warwick et al., Secure Electronic Commerce, Prentice-Hall,
`Inc., 1997
`
`Grotta, Sally Wiener, “4 to 6 Megapixels”, PC Magazine, November
`27, 2001, p. 106-112.
`https://books.google.com/books?id=B2GNM84P3YwC&pg=PA109
`&dq=Fuji+Finepix+6800+zoom+digital+camera&hl=en&sa=X&ved
`=2ahUKEwim-
`6m957bgAhVrja0KHV15BDUQ6AEwAXoECAYQAg#v=onepage
`&q=Fuji%20Finepix%206800%20zoom%20digital%20camera&f=fa
`lse
`
`
`iv
`
`
`
`Exhibit #
`1009
`
`Brief Description
`
`Definition of “user interface”, The Computer Glossary:The Complete
`Illustrated Dictionary, Ninth Edition, The Computer Language
`Company Inc., 2001, p. 420.
`
`1010
`
`Definition of “interactive”, Merriam Webster’s Collegiate
`Dictionary, Eleventh Edition, 2003, p. 651.
`
`1011
`
`“Editor’s Choice,”American Photo, May/June 2001, p.31-32
`
`https://books.google.com/books?id=oxAW7ngnbxwC&pg=PA31&d
`q=Fuji+Finepix+6800+zoom+digital+camera&hl=en&sa=X&ved=2a
`hUKEwim-
`6m957bgAhVrja0KHV15BDUQ6AEwBXoECAIQAg#v=onepage&
`q=Fuji%20Finepix%206800%20zoom%20digital%20camera&f=fals
`e
`
`Fujifilm Software Quick Start Guide,
`https://www.fujifilmusa.com/support/ServiceSupportProductContent .
`do?dbid=670783&prodcat=235228&sscucatid=664271
`
`Universal Serial Bus Specification, Revision 2.0 (April 27, 2000)
`Chapters 1-7
`
`Prosecution History for parent U.S. Patent No. 7,861,006
`
`U.S. Patent No. 7,861,006 (McNulty) (filed March 23, 2004; issued
`December 28, 2010)
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`Prosecution History for parent U.S. Patent No. 8,539,047
`
`v
`
`
`
`Exhibit #
`1017
`
`Brief Description
`
`U.S. Patent No. 8,539,047 (McNulty) (filed November 19, 2010;
`issued September 17, 2013)
`
`1018
`
`Prosecution History for parent U.S. Patent No. 9,059,969 (McNulty)
`
`1019
`
`1020
`
`1021
`
`1022
`
`Complaint for Declaratory Judgment of Noninfringement, Ingenico
`Inc. v. IOENGINE, LLC, C.A. No.1:18-cv-00826-UNA, D.Del. filed
`June 1, 2018
`
`Helal, S., “Pervasive Java, Part II”, Pervasive Computing, April-June
`2002, p. 85-89.
`
`Declaration of Kerry L. timbers in Support of Unopposed Motion to
`Appear Pro Hac Vice on Behalf of Petitioner Ingenico Inc.
`
`Declaration of Sharona H. Sternberg in Support of Unopposed
`Motion to Appear Pro Hac Vice on Behalf of Petitioner Ingenico Inc.
`
`1023
`
`RESERVED
`
`1024
`
`RESERVED
`
`1025
`
`RESERVED
`
`1026
`
`RESERVED
`
`1027
`
`RESERVED
`
`1028
`
`RESERVED
`
`1029
`
`RESERVED
`
`vi
`
`
`
`Brief Description
`
`Exhibit #
`1030
`
`RESERVED
`
`1031
`
`RESERVED
`
`1032
`
`RESERVED
`
`1033
`
`RESERVED
`
`1034
`
`Excerpts from Computer Shopper, January 2002, Vol. 22, No. 1,
`Issue No. 262
`
`1035
`
`RESERVED
`
`1036
`
`1037
`
`IOENGINE, LLC’s Opening Claim Construction Brief, C.A. No.
`1:18-cv-00826-WCB, filed July 15, 2019 with cover letter
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response,
`IPR2019-00416, May 14, 2019
`
`1038
`
`Expert Report of Vijay Madisetti, Ph.D.
`
`1039
`
`1040
`
`Rebuttal Expert Report of Dr. Kevin Butler Regarding the Validity of
`U.S. Patent No. 8,539,047
`
`Declaration of Christopher A. Maxwell on behalf of Fujifilm North
`America Corporation Authenticating Exhibit 1004 [SERVED, but not
`filed]
`
`vii
`
`
`
`Exhibit #
`
`Brief Description
`
`1041
`
`1042
`
`Grotta, Sally Wiener, “4 to 6 Megapixels”, PC Magazine, November
`27, 2001, p. cover, 15, 16, 24, 104-112.
`https://books.google.com/books?id=B2GNM84P3YwC&pg=PA109
`&dq=Fuji+Finepix+6800+zoom+digital+camera&hl=en&sa=X&ved
`=2ahUKEwim-
`6m957bgAhVrja0KHV15BDUQ6AEwAXoECAYQAg#v=onepage
`&q=Fuji%20Finepix%206800%20zoom%20digital%20camera&f=fa
`lse [SERVED, but not filed]
`
`“Editor’s Choice,”American Photo, May/June 2001, p.31-32 with
`cover and contents pages
`
`https://books.google.com/books?id=oxAW7ngnbxwC&pg=PA31&d
`q=Fuji+Finepix+6800+zoom+digital+camera&hl=en&sa=X&ved=2a
`hUKEwim-
`6m957bgAhVrja0KHV15BDUQ6AEwBXoECAIQAg#v=onepage&
`q=Fuji%20Finepix%206800%20zoom%20digital%20camera&f=fals
`e [SERVED, but not filed]
`
`1043
`
`Fuji Photo Film Co., Ltd., Annual Report 2001
`
`1044
`
`Declaration of Steven W. Ramsdell and Ex. A (metadata for Ex.
`1012)
`
`1045
`
`Comparison of Cited Pages of Ex. 1004 with Ex. 1012
`
`1046
`
`Deposition Transcript of Kevin Raymond Boyce Butler, December
`20, 2019
`
`viii
`
`
`
`Exhibit #
`
`Brief Description
`
`1047
`
`Deposition Transcript of Kevin Raymond Boyce Butler, December
`20, 2019
`
`
`
`ix
`
`
`
`I.
`
`
`
`
`
`CLAIM CONSTRUCTION
`
`A. “interactive user interface”
`
`“Interactive user interface” (“IUI”) appears nowhere in the specification. 1
`
`Patentee distinguished IUI from the terms in the specification, including “graphical
`
`user interface,” “graphic user interface” and “GUI,” by not choosing those terms.
`
`Ordinary meaning of “interactive user interface” is “a presentation (display) with
`
`which a user may interact to result in the computer (portable device) taking action
`
`responsively.”
`
`1. “Presentation” and “computer” are more particularly specified in
`the claims of the ’969 patent
`
`The claims require that the IUI be presented on the terminal output
`
`
`
`
`component. The specification explains, “the user is presented with a login prompt
`
`205 on the AT’s display mechanism.” Ex. 1001, 4:39-40; see also, 8:48-49.
`
`“Presentation” is used and described in the ’969 patent as corresponding to a
`
`“display,” thus either term is suitable for the claim construction.
`
`
`1 The ’969 patent specification is substantially the same as its parent patent US
`
`8,539,047 (“the ’047 patent”), collectively is referred to herein as the “McNulty
`
`specification,” and the parties agree to using expert testimony given in co-pending
`
`IPR2019-00416 regarding the ’047 patent.
`
`1
`
`
`
`
`
`For “computer taking action responsively,” the specification describes the
`
`portable device as responding to user interaction with the IUI. Patent Owner’s
`
`expert, Dr. Butler, identified log in screen 205a as an IUI. Ex. 1046, 52:11-55:13.
`
`If a user interacts with login screen text box by supplying improper user
`
`credentials,
`
`
`
`“the TCAP [portable device] can provide[d] an error message to such effect,” Ex.
`
`1001, 7:55-56, in response to user interaction.
`
`The claims also require the portable device to respond to user interaction. Its
`
`memory contains “fourth program code” executed in response to user interaction
`
`with the IUI. As Patent Owner points out, the term “interactive user interface” was
`
`further narrowed in claim 1 of the parent ’047 patent: “the interactive user
`
`interface is configured to enable the user to cause the portable device processor to
`
`execute program code stored on the portable device memory.” Thus, in that claim
`
`2
`
`
`
`the responsive computer is the portable device. Given that the claims require the
`
`portable device to respond to user interaction with the IUI, it would be error to
`
`restrict the computer responding to the user of the IUI to just the terminal. If any
`
`computer is specified as the one responding to user interaction, it must be the
`
`“portable device.”
`
`The Shaw article does not support Patent Owner. Shaw discusses early
`
`interactive systems with “line-by-line input and output” and the advent of
`
`interactive systems with high-performance graphic displays. Ex. 2100, p. 4. Shaw
`
`confirms that the term “interactive user interface” is applicable to older, as well as
`
`more modern systems. Id. at 1.
`
`2. Interactive does not require “interface elements”
`
`
`
`The claims do not require “GUI” “interface elements.” A GUI is only one
`
`type of user interface the specification says “may” be used. Only claim 21 requires
`
`a “graphic user interface.” The specification says “[t]he user interface may be a
`
`conventional graphic user interface…” Ex. 1001, 26:9-14 (emphasis added). The
`
`’969 patent paragraph describing the user interface module of the portable device
`
`makes no mention of interface elements. Id., 26:7-27. Instead, it broadly references
`
`“display, execution, interaction, manipulation, and/or operation of program
`
`modules and/or system facilities through textual and/or graphical facilities.” Id.,
`
`26:16-19. This permissive language does not require “interface elements.”
`
`3
`
`
`
`
`
`
`
`
`
`B. “communicate through”
`
`The ’969 patent is a continuation dating back to US Patent No. 7,861,006,
`
`which claims a “portable tunneling storage and processing apparatus.” Ex. 1015,
`
`30:60. Having first obtained coverage for a tunneling device, patentee then sought
`
`broader protection in continuations for a method and system involving a “portable
`
`device.” Although the specification describes embodiments that “may tunnel data
`
`through an AT” (Ex. 1001, 4:27-30 and Abstract and 1:14), the term “tunnel” is
`
`conspicuously absent from the claims. The term “through” is used without mention
`
`of tunneling. The intended broad, ordinary meaning is clear.
`
`Patent Owner’s proposed narrowing construction commits the ‘sin’ of
`
`importing a limitation from the specification into the claims. Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1320 (Fed. Cir. 2005). Where the patentee has not acted as
`
`its own lexicographer and there is no clear and unmistakable disclaimer, this is
`
`improper. See, e.g., Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed.
`
`Cir. 2016). It is particularly improper for a lay term like “through,” which is
`
`entitled to an ordinary meaning in the context of communicating – “by way of.”
`
`Ex. 3001. Whereas Patent Owner associates “tunneling,” “tunneling client,” and
`
`“TCAP” (all missing from the claims) with preventing access to information, the
`
`same cannot be said for the word “through.”
`
`4
`
`
`
`Patent Owner cites Mr. Geier discussing prior art Iida, rather than the
`
`McNulty specification. POR, p. 20. Mr. Geier testified that when the Iida camera
`
`communicates through the terminal, the terminal has “no reason to” access the
`
`content and therefore it “wouldn’t be accessing the content.” Ex. 2110, 116:14-
`
`119:10. Mr. Geier never said that the specification requires that access is
`
`prevented; he only said that in Iida access would be unnecessary.
`
`II.
`
`IIDA ANTICIPATES
`
`“Anticipation is a question of fact,” CRFD Research, Inc. v. Matal, 876 F.3d
`
`1330, 1338 (2017), here demonstrated by the facts set forth in the Petition, as
`
`found in Iida and explained by Mr. Geier. Mr. Geier’s understanding of legal
`
`concepts is irrelevant to the anticipation determination.
`
`A. In Iida, the user interacts with the display
`
`Responses to Iida user’s inputs are dependent on the displayed user
`
`interface. If a user enters a “2” when Fig. 6A menu is presented on the display, the
`
`display is changed, pursuant to CHECK A PHOTOGRAPHED IMAGE (Fig. 4C),
`
`to a selection screen (block 232) as in Fig. 6E. Ex. 1003, [0094-0095]. If a user
`
`enters a “2” when Fig. 6E is presented on the display, “the image corresponding to
`
`the number inputted by the user has its resolution transformed into that for
`
`thumbnail image display” in a screen like Fig. 6F. Id., [0099]. If a user enters a “2”
`
`5
`
`
`
`when Fig. 6F is presented on the display, the routine may be returned to step 200
`
`where Fig. 6A is now displayed. Id., [0102]. The camera responds to the number
`
`“2” in each case depending on what is displayed in the interface. The interaction
`
`between the user input and what is seen in the interface determines what happens
`
`next. This is one way a user interacts with the displayed menu.
`
`Patent Owner argues that using a keypad is not interaction with the interface.
`
`This argument is contradicted by the ’969 patent itself, which uniformly requires
`
`the use of an input device, illustrating keyboard 1012a and mouse 1012b for doing
`
`so. Patent Owner’s argument that interaction with the input component is not
`
`interaction with the interactive user interface ignores the meaning of “interaction”
`
`as used in the ’969 patent.
`
`Patent Owner ignores Iida’s explicit disclosure of portable terminals with a
`
`“touch pad” or the like, a device in which the user uses a finger to manipulate a
`
`cursor or pointer that moves on the screen. Butler Deposition, Ex. 1046, 27:8-
`
`28:16.
`
`B. Iida discloses cursors and interactively changing menus
`
`Patent Owner accuses Iida of merely disclosing static images, ignoring the
`
`various terminals that disclosed for use with the Iida camera, including “a PDA
`
`[Personal Digital Assistant], a wearable computer, or a mobile computer” that may
`
`be operated by a touch pad or the like. Ex. 1003, [0068],[0144]; Ex. 1002, ¶77. Iida
`
`6
`
`
`
`discloses “an image photographing and ordering method” illustrated by drawings
`
`whose content is displayed on any given terminal device. Ex. 1003, [0002].
`
`Also, Iida illustrated a cursor, which in a given terminal could be manipulated by a
`
`touch pad to enter a number selection from the menu. Ex. 2110, 163:3-165:12.
`
`Iida’s cursor can be moved around a menu screen with a touch pad, and screens
`
`change interactively in response to user inputs. Ex. 1002, ¶77, 74. For at least these
`
`reasons, the user-terminal interface is interactive.
`
`
`
`C. Although Not Required by the Claims, Iida Discloses Interaction
`Interface ElementsError! Bookmark not defined.
`
`
`
`Even if “interaction interface elements such as check boxes, cursors,
`
`menus…” were required by the claims, Ex. 1001, 1:52-53, Iida does disclose
`
`menus and cursors, and how those are displayed on a terminal such as a phone,
`
`PDA or mobile computer depends on the given terminal. These provide
`
`interactivity as users’ interactions and determine how the display dynamically
`
`changes from menu to menu to photos to questions. Ex. 1003, Figs. 6A-6I; Ex.
`
`1002,¶74 (“menu screens are interactive user interfaces because the user interacts
`
`with the screen by selecting one of the displayed choices and that selection
`
`determines what happens next.”); Ex. 2110, 162:15-164:14 (“These are drawn
`
`diagrams ... indicating that with a line which indicates a cursor. That’s how
`
`7
`
`
`
`someone of ordinary skill in the art would view this”). Accordingly, Iida discloses
`
`menu and cursor interface elements.
`
`D. Although Not Required by the Claims, the Iida Terminal Iida
`Responds to User Inputs
`
`
`
`Patent Owner asserts the Iida terminal does not respond to a key press input,
`
`which is one of the input methods disclosed by Iida. POR, p. 27-29. A proper claim
`
`construction does not require the terminal to take action, but instead any computer,
`
`including the portable device. Nevertheless, a terminal (phone) in Iida does act in
`
`response to a number input. To illustrate, as is well known, if a phone is displaying
`
`a phone screen, it may use a user’s number input to generate a phone number for
`
`dialing. In Iida, if the phone is displaying a user interface determined by an Iida
`
`camera, a number may be interpreted as a selection of a menu item or as a code, in
`
`which case the phone transmits the user’s number input to the camera. Ex. 1003,
`
`[0084], [0087], [0131]. Thus, the phone takes action based on whether it
`
`determines a number is being dialed or a selection is being made from a menu or a
`
`code is being entered. When a user’s number input is received by the camera, the
`
`camera responds to it according to the camera’s program code. Id. Iida discloses
`
`code that provides new screen information for presentation on the terminal output
`
`to the user. Thus, both the phone and the camera respond to user interaction.
`
`E. “Communicate Through”
`
`8
`
`
`
`“Communicate through” was correctly decided in the Institution Decision
`
`and is resolved by the proper claim construction.
`
`F. “Second Program Code” and “third program code”
`
`Terminal 14 in Iida acts as a communication node in communication with
`
`camera 12 and image server 18, and camera 12 is a node in communication with
`
`terminal 14. This simple fact is consistent with Patent Owner’s expert’s definition
`
`of a communications node.
`
`Q. Well, a communications node is a node; correct?
`MR. CHUEBON: Objection to form.
`A. I would say that a node capable of communication would be a
`communications node.
`
`
`
`Ex. 1047, 66:21-67:1. Patent Owner argues Iida is silent regarding program code
`
`for this. Yet no such code or flow charts are disclosed in the McNulty specification
`
`either because as Patent Owner’s expert confirmed with respect to Iida,
`
`Q.· So is it fair to say that that phone is providing a communications
`node?
` · · · · · · · ·MR. CHUEBON: Objection to form.
`A.· It's clear that there would need to be some code on that phone in
`order to establish that.
`
`
`Q. "That" being the communications node?
`
`9
`
`
`
`A. "That" being the ability to communicate image data
`wirelessly to an image server over the Internet.
`
`Ex. 1047, 62:9-16. Just as the McNulty specification relies on those of ordinary
`
`skill to provide whatever code is necessary to establish the communication nodes,
`
`so does Iida.
`
`Mr. Geier’s testimony is unchallenged. Ex. 1002, ¶¶52-56. “A POSITA thus
`
`knows from Iida that the control unit 60 executes code ‘to provide a
`
`communications node on the terminal to facilitate communications to the portable
`
`device and to a communications network node through the terminal network
`
`communication interface.’” Id., ¶53. “A POSITA would understand Iida to mean
`
`that the camera necessarily includes code for establishing the camera as a node in
`
`Bluetooth or HomeRF to coordinate communication and establish a link with the
`
`second wireless communication unit 68 of the terminal.” Ex. 1027, ¶54.
`
`Patent Owner argues separate structures are required for the terminal and its
`
`communications node, and for the camera and its communication node. However,
`
`the specification explains when the terminal or camera provide a communications
`
`node on a network, the terminal or camera each become a node on that network:
`
`“[a] computer, other device, software, or combination thereof that facilitates… is
`
`commonly referred to as a ‘node’.” Ex. 1001, 2:7-11. Also, “the TCAPS [server]
`
`... may serve as node within a virtual private network (VPN).” Id., 19:66-20:1.
`
`10
`
`
`
`Accordingly, Iida satisfies the “program code… to provide a communications
`
`node” limitations.
`
`III. CLAIM 3 – IDENTIFYING INFORMATION
`
`
`Claim 3 requires communication that facilitates verification of the portable
`
`device, i.e., the camera in Iida. The communication transmitted by the Iida camera
`
`functions as claimed, and it is irrelevant what words Iida uses to name the
`
`verification information.
`
`In Iida, the shop writes a user ID and password into the camera, uniquely
`
`identifying it. Ex. 1003, [0075]. The shop provides the identifying information to a
`
`company managing the image server so that when the image server receives that
`
`identifying information from the camera, the camera is verified. Id., [0076].
`
`Anyone possessing the camera can access the image server: “the control unit 52
`
`…transmits the user ID and password stored in the built-in memory 48.” Id.,
`
`[0113].
`
`The identifying information stored in the camera is not entered by the user
`
`and thus verifies the camera, not the user, who is unknown to the server. The renter
`
`may hand anyone the camera to use, and Iida explicitly contemplates a plurality of
`
`users conjointly making use of the camera, each using their own terminal. Id.,
`
`[0125].
`
`11
`
`
`
`Accordingly, the communication of the identifying information to the image
`
`server in Iida is a communication facilitating verification of the portable device.
`
`IV. CLAIM 4 – COMMUNICATION CONTENT
`
`Claim 4 recites a portable device having user-initiated fourth program code
`
`that causes a communication to the communication network node, which facilitates
`
`transmission of encrypted communications from the node to the terminal. The
`
`example of fourth program code in Iida presented in the Petition follows a user
`
`selecting branch C at step 208. This leads to steps 254 and 256 which transmit the
`
`user ID and password to image server 18 to “allow the portable terminal 14 to
`
`receive the service offered by the image server 18.” Ex. 1003, [0127]. As such,
`
`communications from the image server 18 to the terminal are facilitated. Whether
`
`the image server 18 follows up by sending data that is thumbnail, high definition or
`
`encrypted has no impact on the steps that have already satisfied claim 4 by
`
`facilitating the communication between the image server and the terminal. Ex.
`
`1002, ¶64.
`
`Moreover, the transmitted encrypted communication is subject to the two-
`
`step printed matter doctrine. In re Distefano, 808 F. 3d 845, 848 (Fed.Cir. 2005).
`
`Since the communication is concededly information content, Patent Owner
`
`addresses the second step of whether the communication is functionally or
`
`structurally related to the physical substrate holding the printed matter.
`
`12
`
`
`
`The claim does not recite any functional relationship between the encrypted
`
`communications and the claimed portable device -- the encrypted communications
`
`go to the terminal and need not even reach the portable device. Patent Owner’s
`
`arguments with respect to cryptographic server module 1020 in the portable device
`
`are inapplicable to the encrypted communications received by the terminal. That
`
`module described in the ’969 patent specification is neither recited in claim 4 nor
`
`does it include code initiated by a user from the IUI on the terminal as claimed. Ex.
`
`1001, 27:28-28:15.
`
`The encrypted data is not functionally related to the communication carrying
`
`it, nor related physically or structurally to any other element in the claim. Patent
`
`Owner’s argument that about restricting access disregards the requirement that the
`
`functional relationship must be between the encrypted data and the substrate
`
`holding the encrypted data. POR, page 34; Distefano, 808 F.3d at 848 (no
`
`patentable weight if printed matter “not functionally or structurally related to the
`
`physical substrate holding the printed matter”); In re Nuijten, 500 F.3d 1346, 1365
`
`(Fed. Circ. 2007) (information stored on claimed storage medium cannot
`
`distinguish from prior art storage medium absent a functional relationship between
`
`the stored information and the storage medium).
`
`
`
`Patent Owner’s reliance on In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir.
`
`1994), is misplaced. POR, pages 34-35. The Institution Decision references In re
`
`13
`
`
`
`Distefano. Institution Decision, page 42. In Distefano, the Federal Circuit discusses
`
`Lowry: “a computer-based structural database was not printed matter, not because
`
`it involved a computer, but because the data structures ‘contain[ed] both
`
`information used by application programs and information regarding their physical
`
`interrelationships within a memory.’” Distefano, 808 F.3d at 850 (emphasis added)
`
`(quoting Lowry, 32 F.3d at 1583-84). Even where information in computer storage
`
`is manipulated by a computer in accordance with recited limitations in a claim, this
`
`Board’s predecessor in a precedential decision has found that the nature of the
`
`information being manipulated “does not lend patentability to an otherwise
`
`unpatentable computer-implemented product or process.” Ex parte Nehls, 88
`
`U.S.P.Q.2d 1883, 1889 (BPAI 2008). Here, the data being in encrypted form does
`
`not create a functional or structural relationship with the claimed portable device,
`
`the communication carrying it, or any other element in the claim. Whether or not
`
`the data sent by the image server is in encrypted form, it remains printed matter
`
`entitled to no patentable weight in this claim to a portable device.
`
` Because the claim is directed to a portable device that need not receive the
`
`encrypted communication, the recitation of an encrypted communication being
`
`transmitted by a network node is merely descriptive of an environment in which
`
`the device may be used. Other than facilitating the communication between the
`
`14
`
`
`
`network node and the terminal, the claim requires nothing in the way of encryption
`
`from the portable device.
`
`V. CLAIMS 5-8, 10-11 – DATABASE
`
`
`
`In Iida, the large capacity storage medium is organized to provide “a large
`
`number of image data saving areas for separately saving image data for individual
`
`users.” Ex. 1003[0070]. Patent Owner does not present argument or evidence that
`
`overcomes Iida’s explicit teaching to organize the storage medium by separating it
`
`into areas for each user. Iida discloses a database. Ex. 1002,¶66.
`
`VI. CLAIM 7 –PROGRAM CODE AS CONTENT
`
`
`
`Patent Owner concedes that program code is printed matter and focuses on
`
`the functional relationship required by the second step of the printed matter
`
`doctrine analysis. Patent Owner argues that program code “impart[s] functionality
`
`to the apparatus that runs it.” POR, 36. But claim 7 does not indicate that any
`
`apparatus runs the downloaded code. Indeed, the claimed portable device may not
`
`even receive the code, which may be simply stored, or transferred between the
`
`terminal and the portable device, or transferred to any other node on a
`
`communications network. There is no identifiable function for the code
`
`downloaded.
`
`Patent Owner points in the ’969 patent to program updating and
`
`synchronization but not in connection with fourth program code. There is no
`
`15
`
`
`
`showing that these functions are ones facilitated by code executed by the portable
`
`device in response to user interaction with an IUI.,
`
`In claim 7, the content of the communication - program code – is not
`
`functional because it is not manipulated, stored, performed or run in accordance
`
`with any other limitations in the claim. It is merely transmitted to the terminal and
`
`its final destination or use is not claimed. In claim 7, the fourth program code of
`
`the portable device causes a communication to be transmitted that facilitates
`
`transmission of a communication from the communication network node to the
`
`terminal. This code is carried out by the portable device the same way regardless of
`
`the content of the transmission sent by the network node. Nehls, 88 U.S.P.Q.2d at
`
`1888. (“The specific SEQ ID NOs recited in the claims do not affect how the
`
`method of the prior art is performed – the method is carried out the same way
`
`regardless of which specific sequences are included in the database.”)
`
`The Patent Owner does not contest that the log in processing step 256 of Iida
`
`facilitates the download of content from the server. Petitioner’s expert confirmed:
`
`“The process of downloading data is the same regardless of the information
`
`content of that data. Program code is data.” Ex. 1002, ¶68. In his deposition, Mr.
`
`Geier merely said that Iida did not explicitly mention downloading of program
`
`code. POR at 37. However, there is no difference between facilitating the
`
`download of program code to the terminal as opposed to facilitating the download
`
`16
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`
`
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