Petition for IPR of U.S. Patent No. 6,993,658
`Case No. IPR2024-00283
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________
`
`AMAZON.COM, INC.,
`Petitioner,
`v.
`DYNAPASS IP HOLDINGS LLC,
`Patent Owner.
`
`______________________________
`Case No. IPR2024-00283
`
`U.S. Patent No. 6,993,658
`
`PETITION FOR INTER PARTES REVIEW OF
`CLAIMS 2 and 7 OF U.S. PATENT NO. 6,993,658
`
`

`

`Petition for IPR of U.S. Patent No. 6,993,658
`Case No. IPR2024-00283
`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION .......................................................................................... 1
`I.
`II. MANDATORY NOTICES ............................................................................ 1
`A.
`Real Party-in-Interest (37 C.F.R. § 42.8(b)(1)) .................................... 1
`B.
`Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................. 2
`C.
`Counsel (37 C.F.R. § 42.8(b)(3)) and Service Information (37
`C.F.R. § 42.8(b)(4)) .............................................................................. 4
`III. CERTIFICATION AND FEES ...................................................................... 5
`IV.
`IDENTIFICATION OF CLAIMS AND GROUNDS .................................... 5
`V. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE .................. 6
`A.
`§325(d) – The Board Should Not Deny Institution .............................. 6
`B.
`§ 314(a) – Fintiv Does Not Support Denial ......................................... 7
`C. General Plastic Does Not Support Denial ........................................... 7
`VI. BACKGROUND .......................................................................................... 11
`A.
`The ’658 Patent .................................................................................. 11
`B.
`Cited References ................................................................................. 12
`1.
`Kaufman (Ex.1008) .................................................................. 13
`2.
`Sormunen (Ex.1007) ................................................................ 14
`VII. LEVEL OF ORDINARY SKILL ................................................................. 14
`VIII. CLAIM CONSTRUCTION ......................................................................... 15
`IX. GROUND #1: CLAIM 7 IS OBVIOUS OVER VENEKLASE IN
`VIEW OF JONSSON AND SORMUNEN .................................................... 16
`A.
`Claim 5 ............................................................................................... 16
`1.
`5[pre]—“A user authentication system comprising:” .............. 16
`2.
`5[a]—“a computer processor;” ................................................ 17
`
`i
`
`

`

`Petition for IPR of U.S. Patent No. 6,993,658
`Case No. IPR2024-00283
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`3.
`
`4.
`
`5[b]—“a user database configured to associate a user
`with a personal communication device possessed by the
`user, said personal communication device configured to
`communicate over a cell phone network with the user
`authentication system;” ............................................................ 18
`5[c]—“a control module executed on the computer
`processor configured to create a new password based at
`least upon a token and a passcode, wherein the token is
`not known to the user and wherein the passcode is known
`to the user, the control module further configured to set a
`password associated with the user to be the new
`password;” ................................................................................ 22
`5[d]—“a communication module configured to transmit
`the token to the personal communication device through
`the cell phone network; and” ................................................... 26
`5[e]—“an authentication module configured to receive
`the password from the user through a secure computer
`network, said secure computer network being different
`from the cell phone network,” ................................................. 28
`5[f]—“wherein the user has an account on the secure
`computer network, wherein the authentication module
`activates access to the account in response to the
`password and deactivates the account within a
`predetermined amount of time after activating the
`account, such that said account is not accessible through
`any password via a secure computer network.” ....................... 31
`B. Ample Motivation Existed to Combine Veneklase and Jonsson ....... 35
`C.
`Claim 6 ............................................................................................... 39
`D.
`Claim 7 ............................................................................................... 41
`E.
`Ample Motivation Existed to Combine Veneklase, Jonsson, and
`Sormunen ............................................................................................ 44
`
`5.
`
`6.
`
`7.
`
`ii
`
`

`

`Petition for IPR of U.S. Patent No. 6,993,658
`Case No. IPR2024-00283
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`X. GROUND #2: CLAIM 2 IS OBVIOUS OVER VENEKLASE IN
`VIEW OF JONSSON, SORMUNEN, AND KAUFMAN .............................. 47
`A.
`Claim 1 ............................................................................................... 48
`1.
`1[b]—“receiving a request from the user for a token via
`the personal communication device, over the second
`network;” .................................................................................. 48
`Claim 2 ............................................................................................... 50
`B.
`C. Ample Motivation Existed to Combine Veneklase, Jonsson,
`Sormunen, and Kaufman .................................................................... 52
`XI. GROUND #3: CLAIM 7 IS OBVIOUS OVER KEW IN VIEW OF
`SORMUNEN ................................................................................................. 55
`A.
`Claim 5 ............................................................................................... 55
`1.
`5[pre] ........................................................................................ 55
`2.
`5[a] ........................................................................................... 56
`3.
`5[b] ........................................................................................... 57
`4.
`5[c] ........................................................................................... 62
`5.
`5[d] ........................................................................................... 64
`6.
`5[e] ........................................................................................... 65
`7.
`5[f] ............................................................................................ 67
`Claim 6 ............................................................................................... 70
`B.
`Claim 7 ............................................................................................... 71
`C.
`D. Ample Motivation Existed to Combine Kew and Sormunen ............. 73
`XII. GROUND #4: CLAIM 2 IS OBVIOUS OVER KEW IN VIEW OF
`SORMUNEN AND KAUFMAN ................................................................... 77
`A.
`Claim 1 ............................................................................................... 77
`
`iii
`
`

`

`Petition for IPR of U.S. Patent No. 6,993,658
`Case No. IPR2024-00283
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`1.
`
`1[b]—“receiving a request from the user for a token via
`the personal communication device, over the second
`network;” .................................................................................. 78
`Claim 2 ............................................................................................... 78
`B.
`C. Ample Motivation Existed to Combine Kew, Sormunen, and
`Kaufman ............................................................................................. 80
`XIII. NO SECONDARY CONSIDERATIONS SUPPORT NON-
`OBVIOUSNESS ........................................................................................... 83
`XIV. CONCLUSION ............................................................................................. 83
`
`iv
`
`

`

`Petition for IPR of U.S. Patent No. 6,993,658
`Case No. IPR2024-00283
`
`Exhibit
`1001
`1002
`1003
`1004
`1005
`
`1006
`
`1007
`
`1008
`1009
`1010
`1011
`
`1012
`
`1013
`
`PETITIONER’S EXHIBIT LIST
`
`Description
`U.S. Patent No. 6,993,658 to Engberg et al. (the “’658 Patent”)
`Declaration of Expert Dr. Jon Weissman
`Curriculum Vitae of Expert Dr. Jon Weissman
`File History of the ’658 Patent
`European Patent Application No. 0844551 to Veneklase
`(“Veneklase”)
`PCT Patent Publication No. WO 96/00485 to Jonsson
`(“Jonsson”)
`PCT Patent Publication No. WO 97/31306 to Sormunen
`(“Sormunen”)
`U.S. Patent No. 5,491,752 to Kaufman et al. (“Kaufman”)
`PCT Patent Publication No. WO 95/19593 to Kew (“Kew”)
`Amazon.com Sotera Stipulation
`Claim Construction Order, Dynapass IP Holdings LLC v.
`JPMorgan Chase & Co., No. 2:22-cv-00212-JRG-RSP (E.D.
`Tex. Oct. 31, 2023).
`Petition for Inter Partes Review in Unified Patents, LLC v.
`Dynapass IP Holdings LLC, IPR2023-00425, Paper 1 (PTAB
`Jan. 6, 2023)
`Unified Patents Institution Decision, IPR2023-00425, Paper 9
`(July 18, 2023)
`
`v
`
`

`

`Petition for IPR of U.S. Patent No. 6,993,658
`Case No. IPR2024-00283
`
`I.
`
`INTRODUCTION
`Amazon.com, Inc. (“Petitioner”) requests Inter Partes Review (“IPR”) of
`
`dependent claims 2 and 7 (the “Challenged Claims”) of U.S. Patent No. 6,993,658
`
`(the “’658 Patent”), purportedly assigned to Dynapass IP Holdings LLC (“PO”).
`
`This Petition presents a streamlined approach to reviewing claims 2 and 7 because
`
`it substantially adopts the unpatentability grounds and arguments raised in another
`
`IPR proceeding challenging claims 1 and 5-6, but not challenging claims 2 and 7.
`
`See Unified Patents, LLC v. Dynapass IP Holdings LLC, IPR2023-00425 (PTAB
`
`Jan. 6, 2023) (“Unified IPR”) (instituted July 18, 2023). By adopting substantially
`
`the same unpatentability grounds and arguments, the Board’s analysis of
`
`independent claims 1 and 5 in conjunction with the Unified IPR will apply here as
`
`well, thus eliminating the need for the Board to re-analyze those independent
`
`claims. Here, the Board need only resolve whether the few additional limitations
`
`of claims 2 and 7 save them from cancellation. This Petition demonstrates—using
`
`a streamlined approach that furthers “efficient administration of the Office” (35
`
`U.S.C. § 311(b))—that those few additional limitations add nothing. Claims 2 and
`
`7 should be cancelled.
`
`II. MANDATORY NOTICES
`A.
`Real Party-in-Interest (37 C.F.R. § 42.8(b)(1))
`The real party-in-interest is Petitioner.
`
`1
`
`

`

`Petition for IPR of U.S. Patent No. 6,993,658
`Case No. IPR2024-00283
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`B.
`The ’658 Patent is presently the subject of a patent infringement lawsuit
`
`brought by PO against Petitioner captioned Dynapass IP Holdings LLC v.
`
`Amazon.com, Inc., Case No. 2:23-cv-00063-JRG-RSP (E.D. Tex.) (the “Related
`
`Litigation”).
`
`Petitioner is aware of the following district court proceedings involving the
`
`’658 Patent:
`
` Dynapass IP Holdings LLC v. Woodforest National Bank et al., 2:22-
`
`cv-00218 (E.D. Tex. filed June 17, 2022);
`
` Dynapass IP Holdings LLC v. Wells Fargo & Company et al., 2:22-
`
`cv-00217 (E.D. Tex. filed June 17, 2022);
`
` Dynapass IP Holdings LLC v. PNC Financial Services et al., 2:22-cv-
`
`00214 (E.D. Tex. filed June 17, 2022);
`
` Dynapass IP Holdings LLC v. JPMorgan Chase & Co. et al., 2:22-cv-
`
`00212 (E.D. Tex. filed June 17, 2022) (“JPMorgan Case”);
`
` Dynapass IP Holdings LLC v. BOKF, National Association et al.,
`
`2:22-cv-00211 (E.D. Tex. filed June 17, 2022);
`
` Dynapass IP Holdings LLC v. Truist Financial Corporation et al.,
`
`2:22-cv-00216 (E.D. Tex. filed June 17, 2022);
`
`2
`
`

`

`Petition for IPR of U.S. Patent No. 6,993,658
`Case No. IPR2024-00283
`
` Dynapass IP Holdings LLC v. Regions Financial Corporation et al.,
`
`2:22-cv-00215 (E.D. Tex. filed June 17, 2022);
`
` Dynapass IP Holdings LLC v. PlainsCapital Bank et al., 2:22-cv-
`
`00213 (E.D. Tex. filed June 17, 2022);
`
` Dynapass IP Holdings LLC v. Bank of America Corporation et al.,
`
`2:22-cv-00210 (E.D. Tex. filed June 17, 2022);
`
` Dynapass Inc. v. Mobile Authentication Corporation et al., 8:18-cv-
`
`01173 (C.D. Cal. July 3, 2018);
`
` Dynapass IP Holdings LLC v. Simmons First National Corporation et
`
`al., 2:23-cv-00068 (E.D. Tex. filed February 20, 2023);
`
` Dynapass IP Holdings LLC v. First Citizens Bancshares, Inc. et al.,
`
`2:23-cv-00067 (E.D. Tex. filed February 20, 2023);
`
` Dynapass IP Holdings LLC v. Experian Information Services, Inc.,
`
`2:23-cv-00066 (E.D. Tex. filed February 20, 2023);
`
` Dynapass IP Holdings LLC v. East West Bancorp, Inc. et al., 2:23-cv-
`
`00065 (E.D. Tex. filed February 20, 2023);
`
` Dynapass IP Holdings LLC v. The Charles Schwab Corporation et
`
`al., 2:23-cv-00064 (E.D. Tex. filed February 20, 2023);
`
`3
`
`

`

`Petition for IPR of U.S. Patent No. 6,993,658
`Case No. IPR2024-00283
`
` Jack Henry & Associates, Inc. v. Dynapass IP Holdings LLC, 1:23-cv-
`
`00388 (D. Del. filed April 5, 2023);
`
`In addition to the Unified IPR, Petitioner is also aware that the ’658 Patent
`
`has been challenged at the PTAB in the following IPRs (the “Related IPRs”):
`
` Bank of America, NA et al. v. Dynapass IP Holdings LLC, IPR2023-
`
`00367 (PTAB Jan. 3, 2023) (“BofA IPR”);
`
` JPMorgan Chase Bank, NA v. Dynapass IP Holdings LLC, IPR2023-
`
`01331 (PTAB Aug. 16, 2023) (“Chase IPR”);
`
` Experian Information Solutions, Inc. v. Dynapass IP Holdings LLC,
`
`IPR2023-01406 (PTAB Sept. 28, 2023) (“Experian IPR”).
`
`The Unified IPR was instituted by the PTAB on July 18, 2023. The Chase
`
`IPR seeks to join the instituted Unified IPR proceedings.
`
`C.
`
`Counsel (37 C.F.R. § 42.8(b)(3)) and Service Information (37
`C.F.R. § 42.8(b)(4))
`Petitioner designates Alexander B. Stein (Reg. No. 71,397) as lead counsel,
`
`and Ahren C. Hsu-Hoffman (Reg. No. 50,862) and Austin L. Zuck (Reg. No.
`
`81,341) as back-up counsel.
`
`Postal and hand deliveries for lead and back-up counsel should be addressed
`
`to: Morgan, Lewis & Bockius LLP, 1400 Page Mill Road, Palo Alto, CA 94304
`
`(Telephone: 650.843.4000; Fax: 650.843.4001).
`
`4
`
`

`

`Petition for IPR of U.S. Patent No. 6,993,658
`Case No. IPR2024-00283
`
`Pursuant to 37 C.F.R. §42.8(b)(4), Petitioner consents to e-mail service at:
`
`MLB_Dynapass-Amazon@morganlewis.com.
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney is filed concurrently
`
`herewith.
`
`III. CERTIFICATION AND FEES
`Petitioner certifies that the ’658 Patent is available for IPR and that
`
`Petitioner is not barred/estopped from requesting this IPR.
`
`The required fees are submitted herewith in accordance with 37 C.F.R. §§
`
`42.103(a), 42.15(a). Any additional fees may be charged to Deposit Account No.
`
`50,0310 (Order No. 049673-2616).
`
`IV.
`
`IDENTIFICATION OF CLAIMS AND GROUNDS
`The ’658 Patent issued from U.S. Patent Application No. 09/519,829, filed
`
`March 6, 2000, which for purposes of this proceeding only, Petitioner treats as the
`
`Priority Date.
`
`Petitioner relies on the following prior art references, none of which were
`
`considered by the Patent Office during prosecution:
`
`Veneklase (Ex.1005): European Patent Application No. 0844551 (published
`
`May 27, 1998) is prior art under § 102(b).1
`
`1 Citations to §§ 102 and 103 are to the pre-AIA statutes.
`
`5
`
`

`

`Petition for IPR of U.S. Patent No. 6,993,658
`Case No. IPR2024-00283
`
`Jonsson (Ex.1006): PCT Patent Publication No. WO96/00485 (published
`
`January 4, 1996) is prior art under § 102(b).
`
`Sormunen (Ex.1007): PCT Patent Publication No. WO97/31306 (published
`
`August 28, 1997) is prior art under § 102(b).
`
`Kaufman (Ex.1008): U.S. Patent No. 5,491,752 (issued February 13, 1996)
`
`is prior art under § 102(b).
`
`Kew (Ex.1009): PCT Patent Publication No. WO95/19593 (published
`
`July 20, 1995) is prior art under § 102(b).
`
`Petitioner challenges claims 2 and 7 using the following grounds:
`
`Ground
`
`1
`
`2
`3
`4
`
`Prior Art
`Veneklase in view of Jonsson and
`Sormunen
`Veneklase in view of Jonsson, Sormunen,
`and Kaufman
`Kew in view of Sormunen
`Kew in view of Sormunen and Kaufman
`
`Statutory
`Basis
`§ 103
`
`§ 103
`§ 103
`§ 103
`
`Claim
`
`7
`
`2
`7
`2
`
`V.
`
`DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE
`A.
`§325(d) – The Board Should Not Deny Institution
`The Office’s resources would be well used in considering claims 2 and 7,
`
`particularly given this Petition’s streamlined approach. While this Petition does
`
`rely on four references presented in the Unified IPR to provide the Board with a
`
`streamlined way to review claims 2 and 7 (which are not challenged in the Unified
`
`6
`
`

`

`Petition for IPR of U.S. Patent No. 6,993,658
`Case No. IPR2024-00283
`
`IPR), § 325(d) is still no bar to institution. For example, Sormunen is used in
`
`combination with Veneklase and Jonsson here, which is an obviousness
`
`combination not presented in the Unified IPR. Further, Kaufman is a new
`
`reference that has not been considered by the Office (either in the IPRs2 or during
`
`prosecution).
`
`§ 314(a) – Fintiv Does Not Support Denial
`B.
`“[T]he PTAB will not discretionarily deny institution in view of parallel
`
`district court litigation where a petitioner presents a stipulation not to pursue in a
`
`parallel proceeding the same grounds or any grounds that could have reasonably
`
`been raised.” Director Vidal’s Memorandum issued June 21, 2022. Here,
`
`Petitioner has stipulated that it will not pursue the same grounds that (1) are or
`
`could have reasonably been raised in this Petition, and (2) are or could have
`
`reasonably been raised in the Unified IPR.
`
`General Plastic Does Not Support Denial
`C.
`While this Petition does follow other petitions temporally, it does not present
`
`the types of issues identified by the Board in General Plastics.
`
`2 The BofA IPR cited to Kaufman for background, but it was not asserted in any
`
`ground of unpatentability.
`
`7
`
`

`

`Petition for IPR of U.S. Patent No. 6,993,658
`Case No. IPR2024-00283
`
`GP Factor 1. Petitioner has not previously filed a petition directed to the
`
`’658 Patent. Further, Petitioner has had no “significant relationship” with any of
`
`the petitioners in the Related IPRs like the one described in Valve v. Electronic
`
`Scripting, IPR2019-00062, Paper 11, 10 (PTAB Apr. 2, 2019) (precedential); see
`
`Mercedes-Benz v. Carucel, IPR2019-01404, Paper 12, 12 (PTAB Jan. 22, 2020)
`
`(finding even membership in Unified Patents did not justify discretionary denial);
`
`Netflix Inc. & Hulu, LLC v. DIVX, LLC, IPR2020-00052, Paper 42, 10-11 (May 14,
`
`2020) (same).
`
`This factor weighs heavily against denial.
`
`GP Factor 2. Petitioner first learned of the ’658 Patent from the complaint
`
`against Petitioner filed on February 20, 2023. Petitioner was thus not previously
`
`aware of the unpatentability of this patent—including the prior art raised in the
`
`BofA and Unified IPRs.
`
`This factor weighs heavily against denial.
`
`GP Factor 3. Although this Petition is filed after the PO Preliminary
`
`Responses were filed and the Institution Decisions were rendered in the BofA and
`
`Unified IPRs, and the PO Response was filed in the Unified IPR, Petitioner is not
`
`using this Petition to address any deficiencies that have been alleged concerning
`
`the grounds raised in those proceedings. See Code200, UAB v. Bright Data Ltd.,
`
`IPR2022-00861, Paper 18 at 5 (PTAB Aug. 23, 2022) (precedential) (“‘[R]oad-
`
`8
`
`

`

`Petition for IPR of U.S. Patent No. 6,993,658
`Case No. IPR2024-00283
`
`mapping’ concerns are minimized when…a petitioner files a later petition that
`
`raises unpatentability challenges substantially overlapping with those in the
`
`previously-filed petition and the later petition is not refined based on lessons
`
`learned from later developments.”).
`
`Rather, Petitioner is challenging two dependent claims, claims 2 and 7, not
`
`challenged in the Unified IPR, by adopting the unpatentability positions presented
`
`by Unified3 as to the claims from which claims 2 and 7 depend (i.e., claims 1 and
`
`5-6) and supplementing those positions to specifically address claims 2 and 7,
`
`which the Unified IPR did not challenge. The Office has also not previously been
`
`presented with the question of whether a combination involving Kaufman renders
`
`claim 2 obvious. Also, this Petition is being filed before any PO Preliminary
`
`Response in the Experian IPR.
`
`This factor weighs against denial, or is (at worst) neutral.
`
`GP Factors 4-5. As previously discussed under Factor 2, Petitioner was
`
`unaware of the asserted prior art in the BofA and Unified IPRs, as the petitions for
`
`these IPRs were filed nearly two months before the complaint was filed against
`
`Petitioner. This Petition is filed just a few months after the institution decisions in
`
`those IPRs to address two dependent claims that will not be addressed in the
`
`3 Petitioner’s grounds are different from those raised in the BofA IPR.
`
`9
`
`

`

`Petition for IPR of U.S. Patent No. 6,993,658
`Case No. IPR2024-00283
`
`instituted Unified IPR proceeding, and just a few months after Petitioner served PO
`
`with its invalidity contentions.
`
`This factor weighs against denial.
`
`GP Factor 6. Efficiency considerations strongly favor institution. This
`
`Petition adopts the same grounds as the Unified IPR for claims 1 and 5-6 and
`
`merely supplements them to address the peripheral limitations of dependent claims
`
`2 and 7, which together amount to a mere five (5) lines of text and recite nothing
`
`novel. As such, it will be exceedingly efficient for the Board to address the
`
`validity of these two minor dependent claims. See Code200, Paper 18 at 6 (“[T]he
`
`Board’s mission ‘to improve patent quality and restore confidence in the
`
`presumption of validity that comes with issued patents’ outweighs the impact on
`
`Board resources needed to evaluate the merits of a petition.”).
`
`This factor weighs heavily against denial.
`
`GP Factor 7. Nothing precludes the Board from issuing a Final Written
`
`Decision within a year of institution.
`
`This factor weighs heavily against denial.
`
`10
`
`

`

`Petition for IPR of U.S. Patent No. 6,993,658
`Case No. IPR2024-00283
`
`VI. BACKGROUND
`A.
`The ’658 Patent
`The ’658 Patent concerns two-factor authentication. Two-factor
`
`authentication uses two factors (e.g., known password and randomly generated
`
`code) to verify a user’s identity when logging into a secure system.
`
`The ’658 Patent acknowledges that the named inventors did not invent two-
`
`factor authentication. See Ex.1001, 1:44-53 (admitting that “[t]he SecurID
`
`product” already “require[ed] a two-factor authentication process”).
`
`The ’658 Patent purports to replace the SecureID card by using “a personal
`
`communication device such as a mobile phone or a pager” to obtain the benefits of
`
`the SecurID product in “a device that many users already carry.” Id., at 1:57-59.
`
`As shown in Figure 1, in response to a user’s token request 160, user token server
`
`116 generates a token 156 (e.g., randomly generated code) and creates a new
`
`password 158 based on the user’s passcode 154 (e.g., secret password known to
`
`user) and the token 156. Ex.1001, 6:59-63, 2:11-15.4 The token 156 is transmitted
`
`to the user’s personal communication device 106 so the user can use it to log in.
`
`Id., 7:31-63, 9:60-64; see Ex.1012, 7-9.
`
`4 Emphasis in textual quotations and annotations/coloring in figures are added
`
`throughout, unless otherwise noted.
`
`11
`
`

`

`Petition for IPR of U.S. Patent No. 6,993,658
`Case No. IPR2024-00283
`
`Ex.1001, Fig. 1
`
`Challenged claim 2 merely requires that “the new password is generated by
`
`concatenating the token and the passcode.” Challenged claim 7 merely requires
`
`that “the request is transmitted by the user through the personal communication
`
`device,” which is similarly required by limitation 1[b]. Ex.1002, ¶¶46-50.
`
`Cited References
`B.
`Summaries of the Veneklase, Jonsson, Sormunen, Kaufman, and Kew
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`references have been provided in conjunction with the Unified IPR. Ex.1012, 18-
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`22, 51-55; Ex.1002, ¶¶52-63. Kaufman was not previously considered, and a short
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`summary—focusing on its relevance to claim 2’s trivial “concatenating”
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`limitation—is provided. Sormunen, while raised in the previous IPRs, was not
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`relied on in combination with Veneklase and Jonsson, and thus a refresher on
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`Sormunen (particularly as to claim 7) is provided below.
`
`Kaufman (Ex.1008)
`1.
`Kaufman discloses “a workstation [that] exchanges data with an
`
`authentication server to obtain access to a desired computing system.” Ex.1008,
`
`6:50-52. “[T]he user initiates communications with the authentication server by
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`entering his ‘password’ into the workstation” and “enters a token provided by the
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`passive token generator.” Id., 6:66-7:2. The workstation “calculates a
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`‘transmission code’ by applying a first, cryptographically secure hashing algorithm
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`to the password and the token, so that this information can be securely sent to the
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`server.” Id., 7:2-5.
`
`Kaufman’s “hashing algorithms” show “a one-way routine for transmuting
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`multiple input data items, by concatenating selected items of the input data.” Id.,
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`9:43-47; Ex.1002, ¶¶58-60.
`
`Ex.1008, 9:65-10:5 – Hashing Algorithms Disclosed in Kaufman
`
`Therefore, Kaufman discloses the “concatenating” requirements of claim 2.
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`Sormunen (Ex.1007)
`2.
`Sormunen teaches (1) sending a “password request” from the user via a
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`mobile phone (first device) to a password server (second device), (2) transmitting
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`the password to the mobile phone over a mobile communication network, and (3)
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`submitting the password to the password server via an access terminal (third
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`device) for authentication. Id., 5:33-7:18, Fig. 2; Ex.1002, ¶¶56-57.
`
`Ex.1007, Fig. 2
`
`Therefore, Sormunen discloses claim 7’s requirement of a token “request []
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`transmitted by the user through the personal communication device.”
`
`VII. LEVEL OF ORDINARY SKILL
`A POSITA would have had at least (1) an undergraduate degree in electrical
`
`and computer engineering or a closely related field; and (2) two or more years of
`
`experience in security. Additional advanced education could substitute for some
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`years of experience, and, likewise, additional industry experience could substitute
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`for education. Ex.1002, ¶¶15-19.
`
`VIII. CLAIM CONSTRUCTION
`Magistrate Judge Payne in the JPMorgan Case recently construed the
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`following terms:
`
`Term
`“concatenating”
`“receiving a request from the user for
`a token via the personal
`communication device, over the
`second network”
`“activates access to the account in
`response to the password”
`“activating access the user account on
`the first secure computer network”
`“password”
`
`Court’s Construction
`“joining sequentially”
`“receiving, over the second network
`via the personal communication
`device, a request from the user for a
`token”
`“activates access to the account in
`response to the creation of the
`password”
`Plain and ordinary meaning
`Plain and ordinary meaning
`
`Ex.1011, 16.
`
`Judge Payne’s construction of the “activates access…” limitation was based
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`on Dynapass’s disclaimer in the BofA and Unified IPRs (id., 10-13), which was
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`found to apply only to claim 5. Judge Payne found that there was no disclaimer for
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`the “activating access…” limitation in claim 1 and afforded that phrase its plain-
`
`and-ordinary meaning.
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`Petitioner submits the claims are obvious under Judge Payne’s or any
`
`reasonable construction of the above terms, and that all other terms should be
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`given their plain meaning. Ex.1002, ¶¶41-45.
`
`IX. GROUND #1: CLAIM 7 IS OBVIOUS OVER VENEKLASE IN VIEW
`OF JONSSON AND SORMUNEN
`Independent claim 5 of the ’658 Patent will be considered first. Claim 7
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`depends from claim 6, which depends from claim 5. Veneklase, in view of Jonsson
`
`and Sormunen, renders the limitations of claims 5 and 6 obvious, as discussed
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`below. Claim 7 adds that the “request is transmitted by the user through the
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`personal communication device.”5
`
`Petitioner adopts Unified’s positions as to the combination of Veneklase and
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`Jonsson for claim 5 and for Sormunen’s teaching concerning claim 1[b]’s
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`recitation of “receiving a request from the user for a token via the personal
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`communication device….” Petitioner applies Sormunen’s teaching to show the
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`similar limitation present in claim 7 is obvious.
`
`A.
`
`Claim 5
`1.
`5[pre]—“A user authentication system comprising:”
`Veneklase discloses the preamble: “[s]everal embodiments of computer
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`security systems [that] are adapted to grant an authorized individual access to a
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`5 Claim 1 is a method claim with similar limitations to claim 5 and, like claim 7,
`
`requires that the system receive a token request from a user via a cell phone
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`network.
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`secured domain, such as a computer or data stream.” Ex.1005, Abstract, Fig. 6;
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`Ex.1002, ¶¶64-66.
`
`Ex.1005, Fig. 6
`
`5[a]—“a computer processor;”
`2.
`Veneklase teaches this limitation. Veneklase discloses that its authentication
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`system operates in host computer 402. Ex.1005, 7:29-8:27, Fig. 6. Veneklase
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`further discloses that computer 80, which corresponds to computer 402, can
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`“comprise a microprocessor.” Id., 5:55-6:4, 7:34-39, Fig. 1; Ex.1002, ¶¶67-69.
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`Ex.1005, Fig. 6
`
`3.
`
`5[b]—“a user database configured to associate a user with a
`personal communication device possessed by the user, said
`personal communication device configured to communicate
`over a cell phone network with the user authentication
`system;”
`Veneklase teaches or renders obvious this limitation. Ex.1002, ¶¶70-76.
`
`Veneklase discloses that “host computer 402 checks the received identification
`
`code and cross references the received password code against a pager phone
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`number list resident within the user table 414” stored in computer 402. Ex.1005,
`
`8:1-5, Fig.6. As shown in Figure 5, “each authorized password 202…has a unique
`
`first entry 204 associated with it and which identifies the name of the authorized
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`user who has been assigned that corresponding password and at least one
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`telephone number 206 and/or network address associated with the identified
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`user.” Id., 6:15-26.
`
`Ex.1005, Fig. 5
`
`Veneklase’s association of a telephone number with user identification 204
`
`and a personal communication device (e.g., a pager) is what the ’658 Patent
`
`discloses. Compare Ex.1005, 8:1-5, with Ex.1001, 2:17-18. Upon determining
`
`that the received user identification 204 is matched with a telephone number,
`
`Veneklase’s “automatic dialer 418 telephones the conventional and commercially
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`available pager 420 by means of conventional and commercially available
`
`communication channel 422.” Ex.1005, 8:5-14.
`
`Veneklase’s personal communication device (e.g., pager 420) is configured
`
`to communicate with the user authentication system (e.g., host computer 402) over
`
`a cell phone network (e.g., communication channel 422). See, Ex.1005, Fig. 6.
`
`Ex.1005, Fig. 6
`
`Veneklase explains that the communication channel over which the random
`
`code is sent could be a “communications channel 84 [that] comprises a pager or
`
`cellular phone.” Id., 8:55-58. A POSITA would have understood that
`
`Veneklase’s “channel 422” discloses the claimed “cell phone network,” which the
`
`’658 Patent explains includes networks that communicate with cell phones and/or
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`pagers. Ex.1002, ¶¶73-74; see Ex.1001, 5:32-40, Abstract, 1:10-11, 2:6-8, 2:28-
`
`31, 3:1-3, 4:13-17, 9:45-54.
`
`To the extent it is argued that Veneklase does not disclose a cell phone
`
`network, a POSITA would have found it obvious to implement the authentication
`
`system of Veneklase using one. Veneklase explicitly contemplates using cell
`
`phones instead of pagers. Ex.1005, 8:55-58. Veneklase explains that utilizing
`
`“communications channel 84” to comm