Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Date Entered: May 2, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLEINC.,
`Petitioner,
`
`V.
`
`ALFONSO CIOFFI, MEGAN ELIZABETH ROZMAN,
`MELANIE ANN ROZMAN, AND MORGAN LEE ROZMAN,
`Patent Owners.
`
`Case CBM2017-00010
`Patent RE43,528
`
`Before JAMESON LEE, BRIAN J. MCNAMARA,and
`CHRISTOPHERM.KAISER, Administrative Patent Judges.
`
`McNAMARA,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 CFR. § 42.208
`
`
`571-272-7822
`
`Paper 9
`Date Entered: May 2, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLEINC.,
`Petitioner,
`
`V.
`
`ALFONSO CIOFFI, MEGAN ELIZABETH ROZMAN,
`MELANIE ANN ROZMAN, AND MORGAN LEE ROZMAN,
`Patent Owners.
`
`Case CBM2017-00010
`Patent RE43,528
`
`Before JAMESON LEE, BRIAN J. MCNAMARA,and
`CHRISTOPHERM.KAISER, Administrative Patent Judges.
`
`McNAMARA,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 CFR. § 42.208
`
`
`
`CBM2017-00010
`Patent RE43,528
`
`BACKGROUND
`
`Pursuant to 35 U.S.C. § 321 and section 18 of the America Invents
`
`Act (AIA), Google, Inc. (Petitioner) filed a Petition, Paper 1 (“Pet.”’),
`
`requesting that the Patent Trial and Appeal Boardinitiate a covered business
`
`method patent review of claims 1, 5, 8, 21-24, 30, 44, 64, and 67
`
`(the “challenged claims’) of U.S. Patent RE43,528 (the ’528 Patent).
`
`Petitioner contends that pursuant to 37 CFR §§ 42.301 and 42.304(a) the
`
`’528 Patent meets the definition of a covered business method patent and
`
`does not qualify as a technological invention. Pet. 5-17. Petitioner further
`
`contendsthat the challenged claimsfail to comply with the patentable
`
`subject matter requirements of 35 U.S.C. § 101. Pet. 54-64. Petitioner also
`
`argues that challenged claims 21—24, 30, 44, 64, and 67 violate the recapture
`
`rule applicable to reissue patents under 35 U.S.C. § 251, that all the
`
`challenged claimsviolate the original patent rule applicable to reissue
`
`patents under 35 U.S.C. § 251, and thatall the challenged claimsare invalid
`
`for failing to comply with the enablement requirement of 35 U.S.C. § 112.
`
`Id. at 30-54.
`
`Alfonso Cioffi, Megan Elizabeth Rozman, Melanie Ann Rozman, and
`
`Morgan Lee Rozman(collectively, “Patent Owner”) filed a Patent Owner
`
`Preliminary Response contesting Petitioner’s assertion that the 528 Patentis
`
`a CBM patent and the grounds on whichPetitioner challenges the
`
`patentability of the claims. Paper 5 (Prelim. Resp.”).
`
`The standard for instituting a covered business methodpatent review
`
`is the sameas that for a post-grant review. (§ 18(a)(1) of the AIA). Forthe
`
`reasons discussed below, we are not persuadedthat Petitioner has
`
`
`
`CBM2017-00010
`Patent RE43,528
`
`demonstrated that the ’528 Patent is a CBM patent. Therefore, we do not
`
`institute a covered business methodpatent review.
`
`PENDING LITIGATION
`
`A person maynotfile a petition under the Transitional Program for
`
`Covered Business Method Patents unless the person or the person’s real
`
`party in interest or privy has been sued for infringement or has been charged
`
`with infringement underthat patent. See § 18(a)(1)(B) of the Leahy-Smith
`
`America Invents Act, Pub. L. 112-29, 125 Stat. 284, 329 (2011) (“AIA”).
`
`Petitioner represents that it has been sued for infringing the ’528 Patent in
`
`Cioffi, et al. v. Google Inc., 2:13-cv-00103 (E.D. Tex.). Pet. ix.
`
`THE °528 PATENT (EXHIBIT 1001)
`
`The ’528 Patent is a reissue patent of U.S. Patent No. 7,484,247. Ex.
`
`1001, 1:14-15. Asits title indicates, the °528 Patent discloses a system and
`
`method for protecting a computer from malicious software. Figure 1
`
`illustrates a computer system with first and second processors 120 and 140,
`
`respectively. As Figure 1 of the ’528 Patent shows, both processors 120 and
`
`140 have a direct communication link with second memory 130, but only
`
`first processor 120 has a direct communication link with first memory 110.
`
`Second processor 140 can access memory 110, as in a multicore system,
`
`using processor 120 only with strict user permission throughreal time
`
`interaction or via stored configurations or commands. Jd. at 10:37—44.
`
`Figure 1 shows networkinterface 190, such as a router or gateway,
`communicating with second processor 140 and the network. Id. at 10:13—
`18. Decryption keys can be passed betweenfirst processor 120 and network
`
`interface device 190 via communication link 191. /d. at 17:31-33. Figure 1
`
`
`
`CBM2017-00010
`Patent RE43,528
`
`also showsthat user interface 150 provides inputto first processor 120 and
`
`communicates with video processor 170 via link 151. Video processor 170
`
`communicates with first processor 120 via link 171 and with second
`
`processor 140 to provide information to video display 180 and is adapted to
`
`combine video data from the first and second processors and transmit it to
`
`display terminal 180 for display in a windowed format. Jd. at 8:31-35.
`
`This architecture is designed to protect memory 110 from malware
`
`initiated intrusions and from initiating unwanted processeson first processor
`
`120 by using second processor 140to isolate first processor 120 and
`
`memory 110 from network 195. Ex. 1001, 8:35-39, 10:20-37. The flow
`
`diagram in Figure 3 illustrates a basic process in whicha userselects data
`
`files to download via a browser(step 310) and second processor P2
`
`downloadsand writes the data files to second memory M2 (step 320). When
`
`first processor P1 is directed to move the data files from memory M2 tofirst
`
`memory M1 (step 330), processor P2 scans for malware in the downloaded
`
`data file (step 340). Depending on whetheror not malwareis detected (step
`
`350), the data file is copied to memory M1 (step 360) or quarantined on
`
`memory M2(step 370) and deleted, cleaned or otherwise quarantined on M2
`
`(step 380). Variations of this process are shown in Figures 4-6 and 10.
`
`Figures 7—9 illustrate various processor configurations. For example, Patent
`
`Ownernotes that Figure 9 shows processor 960 with multiple cores,i.e. first
`
`processor core 920 and second processor core 940 andseparate isolated
`
`memory areas 910 and 930 within a single memory space. Prelim. Resp. 6-
`
`7. Processor core 920 can access memory areas 910 and 930 and second
`
`processor 940 can access memory area 930 and may be configured to be
`
`incapable ofinitiating access to memory area 910. Jd. Functions carried out
`
`
`
`CBM2017-00010
`Patent RE43,528
`
`by processors 920 and 940 may be separate logical processes operating on
`
`the same processor, but functions carried out by second processor 940 may
`
`be configured as unable to access automatically first memory area 910 or
`
`second memory area 910 or another logical process performing functions of
`
`first processor 920. Jd. at 7-8 (citing Ex. 1001 16:10—12, 22-31).
`
`ILLUSTRATIVE CLAIM
`
`Claim 1 is illustrative and is reproduced below asit appears in the
`
`°528 Patent, with matter enclosed in heavy brackets [ ] appearing in original
`
`US. Patent No. 7,484,247, but forming no part of the reissue ’528 Patent
`
`and matter in italics indicting additions made byreissue.
`1. A method of operating a computer system’ capable of
`exchanging data across a network ofone or more computers and
`having at
`least a first and second electronic data processor
`capable of executing instructions using a common operating
`system, comprising [the stepsof]:
`executing [instructions] afirst web browser process, capable
`of accessing data of a website via the network, in a first
`logical process within the commonoperating system using
`the first electronic data processor, wherein the first logical
`process is capable of accessing data contained inafirst
`memory space [and a second memory space];
`executing [instructions] a second web browser process in a
`second logical process within the common operating
`system using the second electronic data processor,
`wherein the secondlogical processis capable of accessing
`data contained in the second memory space [, the second
`logical process being further capable of exchanging data
`across a network of one or more computers];and
`displaying|[, in a windowed formaton a display terminal,] data
`from the first
`logical process and the second logical
`process, wherein a video processoris adapted to combine
`data from the first and second logical processes and
`transmit the combined data to [the] a display [terminal];
`
`
`
`CBM2017-00010
`Patent RE43,528
`
`wherein the computer system is configured such that the
`second electronic data processoris operating in a protected
`mode and data residing on the first memory space is
`protected from corruption by a malware process
`downloaded from the network and executingaspart of the
`second [logical] web browserprocess.
`
`CHALLENGES ASSERTEDIN PETITION
`
`Noneofthe challenges asserted in the Petition is based on the prior
`
`art. Three of Petitioner’s challenges concern whether the claims comply
`
`with the requirements of a reissue patent. Petitioner also challengesall the
`
`claimsasfailing to recite statutory subject matter. In particular, Petitioner
`
`asserts the following challenges:
`
`Claims 21-24, 30, 44, 64, and 67 as unpatentable under 35 U.S.C. §
`
`251 for recapture of subject matter that was surrendered during prosecution
`
`of the original patent claims (Pet. 30-41).
`
`Claims 1, 5, 8, 21-24, 30, 44, 64, and 67 (all the challenged claims) as
`
`unpatentable under 35 U.S.C. § 251 for failing to comply with the original
`
`patent requirement(id. at 41-48);
`
`Claims 1, 5, 8, 21-24, 30, 44, 64, and 67 (all the challenged claims) as
`
`unpatentable under 35 U.S.C. § 112 because the specification fails to enable
`
`the claims(id. at 48-54);
`
`.
`
`Claims 1, 5, 8, 21-24, 30, 44, 64, and 67 (all the challenged claims)as
`
`invalid under 35 U.S.C. § 101 for claiming unpatentable subject matter (id.
`
`at 5464).
`
`CLAIM CONSTRUCTION
`
`Weinterpret the claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`6
`
`
`
`CBM2017-00010
`Patent RE43,528
`
`they appear. See 37 C.F.R. § 42.100(b). Cuozzo Speed Techs. LLCv. Lee,
`
`136 S. Ct. 2131, 2144-46 (2016). In applying a broadest reasonable
`
`construction, claim terms generally are given their ordinary and customary
`
`meaning, as would be understood by one of ordinary skill in the art in the
`
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must
`
`be set forth in the specification with reasonableclarity, deliberateness, and
`
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`Petitioner and Patent Owner propose similar claim constructions.
`
`Patent Owner proposes the following constructions:
`
`“web browser process” — process that can access data on websites
`
`with, or without, assistance of another web browserprocess(e.g., direct or
`
`indirect). Prelim. Resp. 15; Pet. 29.
`
`“first memory space” — memory space distinct from a second memory
`
`space. Id.
`
`“second memory space” — memory spacedistinct from a first memory
`
`space. Id.
`
`“the second electronic data processoris operating in a protected
`
`mode” — the secondelectronic data processoris configured suchthatit is
`
`incapable of automatically accessing the first memory space. Jd.
`
`Patent Ownerstates that these are the broadest reasonable
`
`constructions of the foregoing terms and they are the sameas the
`
`constructions applied by the district court in the co-pendinglitigation. Jd. at
`
`14-15.
`
`The parties also agree that the preamble of claim 64 is limiting. Pet.
`
`29-30; Prelim. Resp. 15. The preamble of claim 64 recites specific features
`
`
`
`CBM2017-00010
`Patent RE43,528
`
`of the claimed computer program product, e.g., that the stored codeis
`capable of executing instructions using a commonoperating system having
`at least one electronic data processor coupled to other elements in a specific
`
`way.
`
`Weagree that the parties’ proposed constructions are consistent with
`
`the Specification of the ’528 Patent and, in that context, are the broadest
`
`reasonable interpretations of the terms. Therefore, to the extent that claim
`
`constructions are relevant to this Decision, we adopt the proposed
`
`constructions.
`
`Citing the claim construction order entered by the district court in co-
`
`pendinglitigation, Petitioner proposes we construe the term “system file” in
`
`claims 21, 44, and 64 to be synonymouswith a “critical file” or “critical
`
`system file,” which refers to files required for the proper operation ofthe
`
`computer’s systems. Pet. 27—28 (citing Ex. 1012). Patent Owner does not
`
`proposea specific construction. We agree that Petitioner’s proposed
`
`construction is broadest reasonable interpretation consistent with the
`
`specification of the °528 Patent and we adoptit in this proceedingto the
`
`extent that claim constructions are relevant to this Decision.
`
`Petitioner also argues that the preambleof claim 44is limiting
`
`because it provides antecedent for other terms. We agree that the preamble
`
`of claim 44is limitingas it recites structure that is essential to carrying out
`
`the claimed method.
`
`THE ’528 PATENT IS NOT DIRECTED TO
`A FINANCIAL PRODUCT OR SERVICE
`
`A covered business methodpatentis “a patent that claims a method or
`
`corresponding apparatus for performing data processing or other operations
`
`
`
`CBM2017-00010
`Patent RE43,528
`
`used in the practice, administration, or managementofa financial product or
`
`service.” 37 C.F.R. § 42.301(a). None of the claims of the 528 Patent
`
`explicitly recites a financial product or service. The Petition argues, that the
`
`phrase “financial product or service” in the statute is to be interpreted
`
`broadly to encompasspatents claiming activities that are financial in nature,
`
`incidental to a financial activity, or complementary to a financial activity.
`
`Pet. 5. Accordingto the Petition, the claims of the ’528 Patent are broad
`
`enough to cover a “financial product or service” at least because they “imply
`
`using a secure web browserin the specification’s Internet banking
`
`embodiment, whichis indisputably a financial activity.” Pet. 5—6.
`
`The Petition was filed on November4, 2016. Seventeen dayslater, on
`
`November21, 2016, the Court of Appeals for the Federal Circuit decided
`
`Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016). The
`
`Patent OwnerPreliminary Response cites Unwired Planet in support ofits
`
`position that “a patent that ‘covers’ some method and corresponding
`
`apparatus does not become a CBM patent becauseits practice could involve
`
`financial activity.” Prelim. Resp. 22. According to Patent Owner, the
`
`claims of the ’528 Patent are not financial in nature, but are claims of
`
`general utility reciting, among other things, a multi-process browser
`
`architecture such that data and system files are protected from malware. Jd.
`
`at 18-19.
`
`Patent Ownerfiled its Preliminary Response on February 16, 2017.
`
`Five days later, on February 21, 2017, the Federal Circuit again addressed
`
`the scope of a covered method patent in Secure Axcess, LLC v. PNC Bank
`
`National Assoc., 848 F.3d 1370 (Fed. Cir. 2017). On March 24, 2017, we
`
`invited the parties to submit briefs directed to the implications of these two
`
`
`
`CBM2017-00010
`Patent RE43,528
`
`decisions on the current proceeding. Paper 6. Each party submitted its brief
`
`on April 7, 2017. Paper 7 (“PO Suppl. Brief’); Paper 8 (“Pet. Suppl. Brief’).
`
`In their supplemental briefing Petitioner and Patent Owneragreethat,
`
`in contrast to the arguments advancedin the Petition, Unwired Planet
`
`established that the statutory definition of covered business method patent
`
`excludespatents claiming activities that are only “incidental to” or
`
`“complementary to” financial activity. Pet. Suppl. Brief 1-2; PO Suppl.
`
`Brief 1. In Secure Axcess, the court stated “Necessarily, the statutory
`
`definition of a CBM patent requires that a patent have a claim that contains,
`
`howeverframed, a financial activity element.” Secure Axcess, 848 F.3d at
`
`1381.
`
`Citing Secure Access, id., Petitioner emphasizesthat the phrasing of a
`qualifying claim doesnot require particular talismanic words. Pet. Suppl.
`Brief 2. Indeed, the court noted that when properly construed in light of the
`
`written description, the claim need only require one of a wide range of
`
`finance-related activities. Secure Axcess, 848 F.3d at 1381. In this case,
`
`Petitioner argues that the claims are directed to a financial activity based on
`
`unrebutted evidencethat the claims cover internet banking discussed in the
`
`Specification. Pet. Suppl. Brief 3. Petitioner also argues that, at a minimum,
`
`a question of material fact exists on this issue that should be resolved in the
`
`preliminary stage in Petitioner’s favor. Jd.
`
`The claims of the ’528 Patent recite features that protect a computer
`
`from malware. Petitioner states that claim 8 recites a method for exchanging
`
`data on a networkthat is limited to encrypting data inafirst process,
`
`transferring the encrypted data in a second processand then transferring the
`
`encrypted data along a networkinterface device. Jd. at 3-4. Petitioner
`
`10
`
`
`
`CBM2017-00010
`Patent RE43,528
`
`emphasizesthat the specification identifies only one use of the encrypted
`
`data, i.e., internet banking. Jd. at 4. According to Petitioner, claim 8 is not
`
`directed to data encryption in general, but to a specific method of operating a
`
`computerthat is used to exchangesensitive financial data with an internet
`
`banking host computer. Jd. Emphasizing that the statute includes in the
`
`definition of a covered business method patent a methodthat is “used in” a
`
`financial activity, Patent Owner contendsthat at least claim 8 qualifies the
`
`°528 Patent as a covered business method patent. Jd.
`Patent Owner concedesthat the claims “cover” an internet banking
`
`application, but emphasizes that what the claims coveris not the operative
`
`inquiry. PO Suppl. Brief 2, 4. Patent Owner argues that the claims must be
`
`directed to a financial activity. Jd. at2. According to Patent Owner, nothing
`
`in the challenged claimsis financial in nature, nothing in the challenged
`
`claimsis explicitly or inherently financial, and nothing in the challenged
`
`claims contemplates an exchange of money. Jd. at 4.
`
`Almostthe entire text of the °529 Patent Specification describes a
`
`computer architecture that protects against malware intrusions. A few lines
`
`of the Specification cited by Petitioner mention that malwareis capable of
`
`stealing passwords, bank account, and social security information (Ex. 1001,
`
`16:38-41, 17:40-41), that sensitive user interface data can be encrypted(id.
`
`at 17:3), and that such encryption is useful in an internet banking host
`
`computer(id. at 17:31). These incidental statements do not change the
`
`thrust of the ?528 Patent disclosure, which discusses almost exclusively
`
`various implementations of the malware protection architecture. The claims
`
`of the °528 Patent are not “directed to” a financial activity,” as the Federal
`
`Circuit has applied that term in Versata Development Group, Inc. v. SAP
`
`11
`
`
`
`CBM2017-00010
`Patent RE43,528
`
`America, Inc., 793 F.3d 1306 (Fed. Cir. 2015), Blue Calypso LLC v.
`
`Groupon Inc., 815 F.3d 1331 (Fed. Cir. 2016) and SightSound Techs., LLC
`
`v. Apple, Inc., 809 F.3d 1307 (Fed. Cir. 2015). See Secure Axcess, 848 F.3d
`
`at 1381. In Versata, the court agreed with the Board’s determination that the
`
`subject patent claimed methods and products for determining a price, and are
`
`considered financial products and services underthe statute. Versata, 793
`
`F.3d at 1325-1327. In Blue Calypso the court foundthe claims to have an
`
`express financial componentin the form of a subsidy or financial
`
`inducementthat encourages consumersto participate in the distribution of
`
`advertisements. Blue Calypso, 815 F.3d at 1314. In SightSound the court
`
`found claims requiring the selling of desired video or digital audio signals
`
`for a fee through telecommunicationslines to be financial in nature.
`
`SightSound, 809 F.3d at 1311, 1315-16. There is no discussion in the ’528
`
`Patent Specification of any method of sale, commerce, advertising or
`
`conducting financial transactions that is implemented by the subject malware
`
`protection architecture.
`
`Weperceive no “issue of material fact” that should be resolved in
`
`favor of the Petitionerat the institution stage. Pet. Supp. Brief 3. Although
`
`the Petition discusses the construction of several claim terms, none of the
`
`proposed interpretations includes any referenceto features that are related to
`
`internet banking or any other feature thatis financial in nature. See Pet. 29
`(e.g., proposing that “web browser process” be construedas a “processthat
`can access data on websites” in which“this ‘access’ to website data can be
`
`direct or indirect”).
`
`In short, none of the claims of the ’528 Patentis “directed to” a
`
`financial activity on its face, and we do not read any suchfinancial activity
`
`12
`
`
`
`CBM2017-00010
`Patent RE43,528
`
`into them based on the Specification’s assertion that malware protection
`
`could be useful in internet banking. Thus, we are not persuaded that the
`
`’528 Patent qualifies for covered business method patent review.
`
`SUMMARY
`
`For the reasons discussed above, we are not persuadedthat the °582
`
`Patent qualifies for covered business method patent review.
`
`In consideration of the foregoing,it is hereby:
`
`ORDER
`
`ORDEREDthat a covered business method patent review of the °528
`
`Patent is not instituted.
`
`PETITIONER:
`
`James Day
`Daniel Callaway
`jday@fbm.com
`deallaway@fbm.com
`
`PATENT OWNER:
`
`Glenn Boisbrun
`David Hofman
`gboisbrun@bh-ip.com
`dhofman@bh-ip.com
`
`13
`
`
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