On June 29, 2016, the following individuals participated in a conference call: (1) Messrs. Jae Youn Kim and Sang Ho Lee, counsel for Patent Owner, and Mr. Nader Asghari-Kamrani, one of the named inventors; (2) Messrs. Thomas Rozylowicz and W. Karl Renner, counsel for Petitioner; and (3) Joni Y. Chang, Justin T. Arbes, and Frances L. Ippolito, Administrative Patent Judges.

The parties are directed to the instructions (reproduced below) provided on the Board’s Web site at http://www.uspto.gov/ip/boards/bpai/prps.jsp regarding the proper use of email communication to the Board.

Patent Owner explained that its litigation counsel could not participate in the instant CBM proceedings for at least 45 days because of the pending motion.

Patent Owner’s request is based on the speculation that the district court would grant its motion, permitting its litigation counsel, to participate in the instant CBM proceedings within 45 days.

In fact, the rule provides that a patent owner may expedite the proceeding by filing an election to waive the preliminary response.

On June 29, 2016, the following individuals participated in a conference call: (1) Messrs. Jae Youn Kim and Sang Ho Lee, counsel for Patent Owner, and Mr. Nader Asghari-Kamrani, one of the named inventors; (2) Messrs. Thomas Rozylowicz and W. Karl Renner, counsel for Petitioner; and (3) Joni Y. Chang, Justin T. Arbes, and Frances L. Ippolito, Administrative Patent Judges.

The parties are directed to the instructions (reproduced below) provided on the Board’s Web site at http://www.uspto.gov/ip/boards/bpai/prps.jsp regarding the proper use of email communication to the Board.

Patent Owner explained that its litigation counsel could not participate in the instant CBM proceedings for at least 45 days because of the pending motion.

Patent Owner’s request is based on the speculation that the district court would grant its motion, permitting its litigation counsel, to participate in the instant CBM proceedings within 45 days.

In fact, the rule provides that a patent owner may expedite the proceeding by filing an election to waive the preliminary response.

Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.

The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.

Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.

Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.

If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration, Case: CBM2016-00063 Patent No. 8,266,432 mediation, etc.) was used and the general result.

Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.

The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.

Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.

Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.

If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration, Case: CBM2016-00064 Patent No. 8,266,432 mediation, etc.) was used and the general result.

Petitioner’s request for a refund of certain post-institution fees paid on 09/01/2015 in the above proceeding is hereby granted.

The amount of $30,000 has been refunded to the Petitioner’s deposit account.

Case IPR2015-01842 Patent 8,266,432 The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.

For the PATENT OWNER:

Petitioner, United Services Automobile Association, filed a Petition requesting an inter partes review of claims 1–551 of U.S. Patent No. 8,266,432 B2 (Ex. 1001, “the ’432 patent”).

The Specification defines an external-entity as “any party offering goods or services that users utilize by directly providing their UserName and SecureCode as digital identity.” Id. at 2:19–21.

Notably, nowhere does Petitioner explain or allege how transmitting a response to a user teaches or suggests providing a result to an external-entity, as required by the claim.

Petitioner contends Neuman discloses a distributed authentication service that allows a user to prove its identity to a verifier without sending data across a network.

“To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citation omitted).