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`Paper No. ____
`Filed: April 22, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FIDELITY INFORMATION SERVICES, LLC,
`Petitioner
`v.
`MIRROR IMAGING, LLC,
`Patent Owner
`______________________
`Case CBM2017-00064
`U.S. Patent No. 6,963,866
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`JOINT PROPOSED REDACTED FINAL WRITTEN DECISION
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`Trials@uspto.gov
`571-272-7822
`
`Paper 61
`Entered: April 9, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FIDELITY INFORMATION SERVICES, LLC,
`Petitioner,
`
`v.
`
`MIRROR IMAGING, LLC,
`Patent Owner.
`____________
`
`Case CBM2017-00064
`Patent 6,963,866 B2
`____________
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`
`
`Before KARL D. EASTHOM, JUSTIN T. ARBES, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
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`FINAL WRITTEN DECISION
`Covered Business Method Patent Review
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
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`I.
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`INTRODUCTION
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`Background
`A.
`Petitioner, Fidelity Information Services, LLC (“Petitioner” or “FIS”),
`filed a Petition seeking a covered business method patent review of claims
`1–55 of U.S. Patent No. 6,963,866 B2 (Ex. 1001, “’866 patent”), pursuant to
`§ 18 of the Leahy-Smith America Invents Act (“AIA”).1 Paper 2 (“Pet.”).
`On April 10, 2018, we instituted a covered business method patent review of
`claims 1–55 of the ’866 patent under 35 U.S.C. § 101. Paper 21 (“Decision
`on Institution” or “Inst. Dec.”), 43–44; see Paper 26 (public redacted
`version). Patent Owner, Mirror Imaging, LLC (“Patent Owner” or “Mirror
`Imaging”), filed a request for rehearing of the Decision on Institution, which
`was denied. Paper 31 (“Reh’g Dec.”); see Paper 33 (public redacted
`version).
`Subsequently, Patent Owner filed a Patent Owner Response (Paper
`38, “PO Resp.”),2 and Petitioner filed a Reply (Paper 44, “Reply”). With
`authorization (Paper 56), Petitioner (Paper 59, “Pet. PEG Br.”) and Patent
`Owner (Paper 58, “PO PEG Br.”) filed supplemental briefing addressing the
`impact of the Office’s 2019 Revised Patent Subject Matter Eligibility
`
`1 Pub. L. No. 112-29, 125 Stat. 284 (2011); see also id. at 329–31 (providing
`that the transitional program for covered business method patents will be
`regarded as a post-grant review under Chapter 32 of Title 35 of the United
`States Code, and will employ the standards and procedures of a post-grant
`review, subject to certain exceptions).
`2 Patent Owner initially filed its Response under seal, but subsequently
`withdrew its Motion to Seal. See Papers 39, 40. Accordingly, the Response
`will be made public.
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`Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “Guidance”), available at
`https://www.federalregister.gov/documents/2019/01/07/2018-28282/2019-
`revised-patent-subject-matter-eligibility-guidance.
`An oral hearing was held on January 15, 2019, and the record includes
`a transcript of the hearing. Paper 60 (“Tr.”).
`
`The Board has jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has established by a
`preponderance of the evidence that claims 1–55 of the ’866 patent are
`unpatentable under § 101.
`
`Related Matters
`B.
`Petitioner identifies numerous federal district court actions filed by
`Patent Owner involving the ’866 patent and related patents filed in the
`U.S. District Court for the Eastern District of Texas. Pet. 82–84. Petitioner
`also identifies two closed related district court matters filed in the same
`district. Id. at 84–85. Patent Owner provides a list of numerous district
`court actions in which the ’866 patent is asserted. Paper 5. Patent Owner
`also cites two recently allowed applications related to the ’866 patent.
`PO Resp. 62 (citing Exs. 2005, 2014, 2032); see also Paper 50 (citing a
`Notice of Allowance for U.S. Patent Application No. 15/990,160 (Ex.
`2036)).
`
`The ’866 Patent
`C.
`The ’866 patent discloses methods and systems for financial
`institutions, such as banks and credit unions, to store and retrieve financial
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`documents from both on-site and off-site storage systems. Ex. 1001, [57],
`1:38–63, 2:21–34. The ’866 patent explains that conventional methods for
`retrieving a financial document by a financial institution enabled an
`employee of the financial institution (e.g., a bank teller) to input the client
`request for a particular document into an interface incorporated into a
`computer terminal. Id. at 1:38–48. “The interface is inter-linked with the
`on-site storage system.” Id. at 1:48–49. The ’866 patent explains that the
`“[t]he storing, downloading and retrieving . . . including the reproduction
`and the distribution” of such financial documents is “known in the industry
`as back office production.” Id. at 1:54–58. According to the specification,
`the “majority of financial institutions electronically store financial
`documents only in an on-site storage system, and not in an off-site storage
`system.” Id. at 1:64–2:3. Thus, these institutions realize a significant
`financial burden because the back office production is “concentrated strictly
`at the financial institution” and cannot be outsourced to third parties.
`Id. at 2:3–5.
`Further, according to the specification, “[o]ther financial institutions
`do electronically store financial documents on-site and off-site storage
`systems.” Id. at 2:6–7. But the methods used by these institutions to access
`“financial documents stored in the off-site storage system are deficient in
`that the interface utilized in such methods is only inter-linked with the on-
`site storage system.” Id. at 2:8–12. “That is, there is no interface
`independently inter-linked with the off-site storage system.” Id. at 2:12–13.
`Thus, according to the specification, the financial documents in the off-site
`storage system cannot be accessed efficiently. Id. at 2:13–15. The financial
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`institutions are still responsible for retrieving these documents through their
`back office production, and thus, their expenses remain high. Id. at 2:15–18.
`The ’866 patent specification, therefore, recognizes a need to
`“implement a method for a financial institution to obtain electronically-
`stored financial documents from both on-site and off-site storage systems
`that reduces, if not eliminates, the back office production . . . by providing a
`direct interface inter-linked with the off-site storage system.” Id. at 2:23–28.
`“With such an interface, the responsibility for retrieving financial documents
`from the off-site storage can be outsourced to third party entities while still
`providing the financial institution with efficient access to any financial
`documents electronically stored in the off-site storage system.” Id. at 2:28–
`33.
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`The specification discloses methods for a financial institution to
`obtain electronically stored financial documents having a specific document
`parameter, typically a particular numerical sequence, such as a record, from
`on-site and off-site storage systems. Id. at 2:38–53, 3:10–17. The
`specification explains that in one embodiment, the financial documents of
`the institution are maintained in the off-site storage system when the specific
`document’s parameter is greater than a predetermined parameter. Id. at
`2:46–49. The documents having parameters that are less than or equal to the
`predetermined parameter are maintained in the on-site storage system. Id. at
`2:50–53.
`“When the financial institution receives a request for a financial
`document, the financial institution compares the specific document
`parameter of the requested document to the predetermined parameter to
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`determine if the specific document parameter is greater than, less than, or
`equal to the predetermined parameter.” Id. at 2:54–59. According to the
`specification, a computer terminal at the financial institution is “connected to
`both the off-site and on-site storage systems through a processing unit.” Id.
`at 2:59–62. The financial institution uses the processing unit, at least
`partially, to “automatically access one of the storage systems in response to
`the comparison of the specific document parameter to the predetermined
`parameter.” Id. at 2:62–65. For example, “if it is determined that the
`specific document parameter is less than or equal to the predetermined
`document parameter, then the processing unit accesses the second or on-site
`storage system.” Id. at 2:65–3:1. “[I]f it is determined that the specific
`document parameter of the financial document is greater than the
`predetermined parameter, then the processing unit accesses the first or off-
`site storage system.” Id. at 3:2–5. “After the requested financial document
`is inputted, the requested document is then retrieved in order to reproduce
`the financial document, and distribute the financial document to an end user
`of the financial institution.” Id. at 3:6–9.
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`Illustrative Claims
`D.
`1. A method of obtaining an electronically-stored financial
`document from a first storage system remotely-located from a
`second storage system wherein the first and second storage
`systems each include a plurality of financial documents stored
`therein and wherein each of the financial documents include at
`least one specific document parameter, said method comprising
`the steps of:
`storing a plurality of financial documents in a first fixed
`medium at the first storage system when the specific document
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`than a
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`is greater
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`the financial document
`parameter of
`predetermined parameter;
`storing a plurality of financial documents in a second fixed
`medium at the second storage system when the specific
`document parameter of the financial document is less than or
`equal to the predetermined parameter;
`utilizing a computer terminal connected to the first and
`second storage systems through a processing unit;
`receiving a request for at least one of the stored financial
`documents;
`inputting the request into the computer terminal;
`comparing the specific document parameter of the
`requested financial document to the predetermined parameter to
`determine if the specific document parameter is greater than, less
`than, or equal to the predetermined parameter after the request
`has been inputted;
`automatically accessing the first storage system through
`the processing unit when the specific document parameter is
`greater than the predetermined parameter and automatically
`accessing the second storage system through the processing unit
`when the specific document parameter is less than or equal to the
`predetermined parameter; and
`retrieving the requested financial document, as defined by
`the inputted request, in the first fixed medium when the specific
`document parameter is greater than the predetermined parameter
`and in the second fixed medium when a specific document
`parameter of the financial document is less than or equal to the
`predetermined parameter.
`22. A method as set forth in claim 1 further including an
`outsourcing institution associated with the second storage
`system.
`23. A method for a financial institution to obtain a stored
`financial document from an off site storage system remotely-
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`located from an on-site storage system wherein the financial
`document is associated with at least one specific document
`parameter with the specific document parameter being defined as
`a specific document age, said method comprising the steps of:
`maintaining the financial document in the off-site storage
`system when the specific document age of the financial
`document is greater than a predetermined age;
`maintaining the financial document in the on-site storage
`system when the specific document age of the financial
`document is less than or equal to the predetermined age;
`utilizing a computer terminal associated with the financial
`institution and connected to the off-site and on-site storage
`systems though a processing unit;
`receiving a request for the financial document;
`inputting the request into the computer terminal;
`comparing the specific document age of the requested
`financial document to the predetermined age to determine if the
`specific document age is greater than, less than, or equal to the
`predetermined age after the request has been inputted;
`automatically accessing
`the off-site storage system
`through the processing unit when the specific document age is
`greater than the predetermined age and automatically accessing
`the on-site storage system though the processing unit when the
`specific document age is less than or equal to the predetermined
`age; and
`automatically retrieving the requested financial document
`from the accessed storage system as defined by the inputted
`request.
`24. A method as set forth in claim 23 further including the
`step of processing the request to locate the requested financial
`document.
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`25. A method as set forth in claim 24 further including the
`step of reproducing the requested financial document after the
`request has been processed and retrieved.
`26. A method as set forth in claim 25 wherein the steps of
`processing the request, retrieving the requested financial
`document, and reproducing the requested financial document are
`controlled by an interlinked computer program.
`37. A method as set forth in claim 23 further including the
`step of inputting identification data of the requested financial
`document into the computer terminal through a primary interface
`inter-linked with the on-site storage system when the specific
`document age of the financial document is less than or equal to
`the predetermined age.
`38. A method as set forth in claim 37 further including the
`step of inputting identification data of the requested financial
`document into the computer terminal by selecting an exit
`function at the primary interface when the specific document age
`of the financial document is greater than the predetermined age.
`39. A method as set forth in claim 38 wherein the step of
`selecting the exit function is further defined by initiating a
`secondary interface inter-linked with the off-site storage system
`and inputting identification data into the secondary interface.
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`Instituted Ground of Unpatentability
`E.
`We have instituted review on the sole asserted ground—that claims
`1–55 of the ’866 patent are unpatentable as directed to patent-ineligible
`subject matter under § 101.
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`II. ANALYSIS
`Claim Construction
`A.
`In a covered business method patent review based on a petition filed
`before November 13, 2018, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.300(b)
`(2017).3 Consistent with that standard, claim terms are generally given their
`ordinary and customary meaning, as would have been 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).
`
`Only terms which are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy. See Wellman, Inc. v.
`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Petitioner contends that no claim constructions are necessary to resolve the
`question of patent eligibility under § 101, but notes that a district court
`previously construed certain terms in a patent related to the ’866 patent, and
`another district court preliminarily construed certain terms in the ’866 patent
`and a related patent. Pet. 41–43 (citing Exs. 1024–26). Patent Owner does
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`3 A different rule applies for later cases. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.300(b) effective November 13, 2018). The
`Petition was filed on October 2, 2017, prior to the effective date of the rule
`change.
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`not address claim construction of the challenged claims in its Response. We
`determine that no term requires express construction.
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`Covered Business Method
`B.
`Section 18 of the AIA provides for the creation of a transitional
`program for reviewing covered business method patents, and limits review
`to persons or their privies that have been sued or charged with
`infringement of a “covered business method patent.” AIA § 18(a)(1)(B);
`see 37 C.F.R. § 42.302. In addition,
`the term “covered business method patent” means a patent that
`claims a method or corresponding apparatus for performing
`data processing or other operations used in the practice,
`administration, or management of a financial product or
`service, except that the term does not include patents for
`technological inventions.
`AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). A patent need have only one
`claim directed to a covered business method to be eligible for review. See
`Transitional Program for Covered Business Method Patents—Definitions
`of Covered Business Method Patent and Technological Invention; Final
`Rule, 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012) (“Final Rule”).
`For the reasons set forth below, Petitioner has shown that it has
`standing to file the Petition to challenge the ’866 patent as a covered
`business method patent.
`
`Charged with Infringement
`1.
`Under 37 C.F.R. § 42.302(a),
`[a] petitioner may not file with the Office a petition to
`institute a covered business method patent review of the patent
`unless the petitioner, the petitioner’s real party-in-interest, or a
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`privy of the petitioner has been sued for infringement of the
`patent or has been charged with infringement under that patent.
`See AIA § 18(a)(1)(B). In addition, 37 C.F.R. § 42.302(a) provides that
`“[c]harged with infringement means a real and substantial controversy
`regarding infringement of a covered business method patent exists such that
`the petitioner would have standing to bring a declaratory judgment action.”
`Petitioner asserts standing under 37 C.F.R. § 42.302(a) because “its
`customers and privies, PlainsCapital Bank (‘PlainsCapital’) and Origin Bank
`(‘Origin’), have been sued for infringement based on [Patent Owner’s]
`allegations that their respective online banking systems infringe the ’866
`patent.” Pet. 21.4 Petitioner also asserts standing under § 42.302(a) because
`Petitioner “has been ‘charged with infringement’ based on Patent Owner’s
`infringement allegations against PlainsCapital and Origin Bank’s online
`banking systems provided by [Petitioner].” Id. Petitioner relies on
`originally filed redacted Exhibits 1030–32 and 1038–40 (see infra note 5)
`and other Exhibits cited in its Petition to support its standing showing. Id. at
`23–26 (citing Exs. 1030–32, 1038–40).
`The record also contains unredacted confidential versions of Exhibits
`1030–32 and 1038–40. Because Exhibits 1030–32 and 1038–40 as filed
`with the Petition contain redactions, and Patent Owner asserted the
`redactions may omit, inter alia, “possible exemptions” about Petitioner’s
`indemnity obligations (Paper 7, 33–34), the panel ordered the parties to meet
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`4 Origin Bank changed its name from “Community Trust Bank” prior to the
`filing of the Petition. See Ex. 1043; Ex. 1044.
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`and confer to agree about the filing of confidential (non-public) material by
`Petitioner. See Paper 12. The record indicates the parties reached
`agreement, as Petitioner filed substantially unredacted (non-public) versions
`of Exhibits 1030–32 and 1038–40 (i.e., Exhibits 1048–53). See Paper 12, 2–
`3; Exs. 1048–53 (filed as “Board and Parties Only,” i.e., non-public
`material).5 We also authorized additional briefing (collectively, “Standing
`Briefing”) by the parties to address the standing issue prior to institution.
`See Paper 12; Inst. Dec. 9–17 (addressing the briefing); Paper 13 (Patent
`Owner’s Supplemental Brief filed under seal); Paper 15 (Patent Owner’s
`redacted Supplemental Brief); Paper 16 (Petitioner’s Reply to Patent
`Owner’s Supplemental Brief filed under seal); Paper 19 (Petitioner’s
`redacted Reply).
`As explained more fully in the Decision on Institution and Rehearing
`Decision (see Inst. Dec. 9–17; Reh’g Dec. 5–7), and as further explained
`below, the Petition shows Petitioner agreed to defend and indemnify its
`customer banks (PlainsCapital and Origin Bank) for infringement of the
`’866 patent under indemnity obligations for software services FIS supplied
`to the banks, namely “Business Electronic Banking (‘BeB’), and/or
`Consumer Electronic Banking (‘CeB’) services” (Ex. 1032 § 1; Ex. 1040
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`5 Exhibits 1048–53 constitute substantially unredacted versions of originally
`filed Exhibits 1030–32 (respectively, Information Technology Services
`Agreement (“ITSA”) between Petitioner and PlainsCapital Bank; Order
`Form for Plains Capital Bank; and Services Addendum to the ITSA
`(“Addendum”)) and 1038–40 (respectively, ITSA between Petitioner and
`Community Trust Bank; Order Form for Community Trust Bank; and
`Addendum to the ITSA).
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`§ 1). See Pet. 21–28 (citing Exs. 1028–44).
`After institution, in its Response, Patent Owner maintains that
`Petitioner lacks standing to file the Petition.6 See PO Resp. 50–52.
`According to Patent Owner, neither “petitioner [nor] the petitioner’s real
`party-in-interest . . . ha[ve] been sued for infringement of the patent.”7 Id. at
`52 (quoting 37 C.F.R. § 42.302 (alterations by Patent Owner)). Patent
`Owner also contends “[a]t best, FIS’s evidence suggests that the indemnity
`provision [in the ITSA] might cover the ‘CeB’ and BeB’ services provided–
`–but the heavy redactions raise serious doubts about possible exemptions
`and requirements to satisfy such a provision.” Id. at 53. Patent Owner also
`contends Petitioner fails to show privy status for its customer banks. See id.
`at 53 (arguing a “privy is a party that has a direct relationship to the
`petitioner with respect to the allegedly infringing product or service—not
`simply any customer to which the petitioner may provide products or
`services unrelated to allegations of infringement” (internal quotation marks
`omitted)).
`Regarding the allegedly infringing products, Patent Owner contends
`that Petitioner fails to show that its online services, BeB and CeB, “are the
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`6 We only consider arguments made during trial. To the extent any of the
`Standing Briefing arguments bear on the standing issue and Patent Owner
`did not waive them by failing to include the arguments in its Response, we
`incorporate by reference our findings and discussion regarding that issue
`from the Decision on Institution (Inst. Dec. 8–17) and from the Decision on
`Patent Owner’s Request for Rehearing (Reh’g Dec. 5–7).
`7 Petitioner identifies itself and Fidelity National Information Services, Inc.
`as real parties-in-interest. Pet. 81.
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`services that infringe Mirror Imaging’s patent[].” Id. at 55–56. Patent
`Owner explains as follows: “Mirror Imaging specifically identified the
`Plains Capital’s Remote Deposit Capture System as an infringing service.
`See Ex. 1028 (Complaint against Plains Capital), ¶ 23. Nowhere does FIS,
`nor the Plains Capital declarant, allege that ‘BeB’ or ‘CeB’ services
`provided by FIS include this allegedly infringing remote deposit system.”
`PO Resp. 56. In a similar argument about Origin Bank, Patent Owner
`alleges “neither FIS nor the Origin [Bank] declarant allege that the accused
`Origin [Bank]’s Remote Deposit Capture is supplied by FIS.” Id. (citing Ex
`1036 (Complaint Against Origin Bank) ¶ 24). Comparing the two
`customer’s systems, Patent Owner contends that “[i]t is particularly
`suspicious that the listed features of the Plains Capital and Origin Bank
`deposit systems look quite different. Compare Ex. 2008 (screen capture of
`Plains Capital remote deposit website description), with Ex. 2009 (content
`download from Origin Bank website detailing its remote deposit system).”
`PO Resp. 56.
`Patent Owner also argues that Petitioner’s exhibits filed originally
`with the Petition, including Petitioner’s Order Forms, contain heavy
`redactions with outdated “effective dates of over 2.5 years ago for Plains
`Capital and 3 years ago for Origin Bank, allegedly provided over an initial
`term (redacted), and potentially extended over a renewal term (also
`redacted).” Id. at 54 (citing Exs. 1031, 1039). Patent Owner also contends
`the Electronic Service Addenda (showing indemnity obligations) contain
`heavy redactions. See id. at 55 (citing Exs. 1032, 1038).
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`Lastly, quoting Arris Group., Inc. v. British Telecommunications,
`PLC, 639 F.3d 1368, 1375 (Fed. Cir. 2011), Patent Owner contends
`Petitioner relies only on the first prong of Arris, namely, “a supplier whose
`customers have been accused of direct infringement based on use of a
`supplier’s equipment has standing to commence a declaratory judgment
`action only if (1) ‘the supplier is obligated to indemnify its customers from
`the infringement liability.’” See PO Resp. 58–59. Under this first prong,
`Patent Owner maintains Petitioner failed to provide “concrete evidence”
`about its obligation to indemnify Origin Bank or PlainsCapital for
`“infringement liability.” Id. at 58–59 (citing Arris, 639 F.3d at 1375;
`Creative Compounds, LLC v. Starmark Labs., 651 F.3d 1303, 1316–17)
`(Fed. Cir. 2011)).
`Petitioner replies that Patent Owner “misunderstands the evidence
`presented”:
`Anthony Giovannetti, as FIS’s in-house counsel (not a customer-
`bank declarant), is competent to attest to the facts in his
`declarations. See Exs. 1029, 1037. Mr. Giovannetti explained
`that FIS provides the accused online banking system—the BeB
`and CeB products—to the banks Mirror Imaging sued, and he
`testified that the contracts were in force. Pet. 23–26; Ex. 1029,
`¶¶ 6–10, 13–14; Ex. 1037, ¶¶ 6–10, 13–14. Patent Owner
`speculates that the systems may have changed or the contracts
`are not in force (POR 53–58), but this is contrary to the evidence
`and Mr. Giovannetti’s testimony. Mr. Giovannetti also provided
`evidence that the banks requested indemnity and FIS accepted
`the indemnity under their contracts.
`Reply 28 (citing Pet. 24–26; Ex. 1029 ¶¶ 12, 15; Ex. 1037 ¶¶ 12, 15).
`Petitioner has established standing under § 42.302(a) because
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`Petitioner has been “charged with infringement” of the ’866 patent “such
`that the petitioner would have standing to bring a declaratory judgment
`action.” According to Arris, “where a patent holder accuses customers of
`direct infringement based on the sale or use of a supplier’s equipment, the
`supplier has standing to commence a declaratory judgment action if . . . the
`supplier is obligated to indemnify its customers from infringement liability.”
`Arris, 639 F.3d at 1375; see also Microsoft Corp. v. DataTern, Inc., 755
`F.3d 899, 904 (Fed. Cir. 2014) (explaining that the supplier would “stand in
`the shoes of the customers and would be representing the interests of their
`customers because of their legal obligation to indemnify”). As summarized
`above, Petitioner agreed to indemnify its customer banks for infringement of
`the ’866 patent under applicable indemnity obligations, as set forth in the
`ITSA. See Pet. 21–28 (citing Exs. 1028–44).
`The ITSA supports Petitioner’s position. Specifically, Section 10.2 of
`the ITSA requires Petitioner to “indemnify, defend and hold harmless”
`customer banks for “any and all Losses asserted by a third party that result
`from, relate to, arise out of, or are incurred in connection with . . . a claim
`that a Service, Software, or Deliverable infringes a . . . U.S. patent.” Ex.
`1030 § 10.2; Ex. 1038 § 10.2 (materially similar language). An Electronic
`Banking Services “Addendum describes the provision of a service
`(‘Service’)” (Ex. 1030 § 2; Ex. 1038 § 2), and each Addendum in turn
`describes “Business Electronic Banking (‘BeB’), and/or Consumer
`Electronic Banking (‘CeB’) services” provided by Petitioner FIS (Ex. 1032
`§ 1; Ex. 1040 § 1).
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`Furthermore, Petitioner shows that its obligation to indemnify its
`customer banks, PlainsCapital and Origin Bank, derives from the customer
`banks’ alleged “infringement liability” of the ’866 patent. See Arris, 639
`F.3d at 1375. Patent Owner’s complaint against PlainsCapital and Origin
`Bank alleges infringement of the ’866 patent based generally on each
`customer bank’s “Online Banking system.” See Ex. 1028 ¶ 32 (complaint
`against PlainsCapital); Ex. 1036 ¶ 33 (complaint against Origin Bank). As
`indicated above, Petitioner provides BeB and CeB services to Origin Bank
`(Ex. 1040 § 1; Ex. 1052, 2), and CeB services to PlainsCapital (Ex. 1032 §
`1; Ex. 1049, 3).
`In addition, Petitioner’s declarant, Anthony Giovannetti, testifies he
`has “been in-house counsel for [Petitioner] since 2010.” Ex. 1029 ¶ 5. He
`testifies that Petitioner provides “Business e-Banking (‘BeB’) and Consumer
`e-Banking (‘CeB’) products, for use in PlainsCapital’s online banking
`system.” Id. ¶ 7. He further testifies that PlainsCapital uses those products
`“in its accused online banking system.” Id. ¶ 10 (emphasis added). He
`testifies that pursuant to a letter from PlainsCapital requesting indemnity
`under Sections 10.2 and 10.3 of the ITSA “for the accused products
`identified in paragraph 7” of his declaration––i.e., the BeB and CeB
`products and services––Petitioner agreed to indemnify PlainsCapital in
`accordance with its contractual indemnity obligations. See id. ¶¶ 7–15. Mr.
`Giovannetti provides substantially similar testimony with respect to Origin
`Bank. See Ex. 1037 ¶¶ 7–15.
`Patent Owner’s contention that Petitioner does not allege that the BeB
`or CeB services it provides pertain specifically to the “Remote Deposit
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`Capture” systems of PlainsCapital and Origin Bank does not undermine
`Petitioner’s showing. See PO Resp. 56 (citing Ex. 1028 ¶ 23; Ex. 1036
`¶ 24). As noted above, Mr. Giovannetti testifies that FIS supplies services
`and products used in the accused online banking system and FIS agreed to
`indemnify the banks based on the services and products supplied under the
`indemnity obligations. See Ex. 1029 ¶¶ 7–15; Ex. 1037 ¶¶ 7–15. Also, in
`alleging infringement, each complaint alleges generally what each bank
`does, or what each bank’s “Online Banking system” does. See Ex. 1036
`¶ 35 (alleging generally what “Origin performs” and alleging “[f]or
`example, Origin’s Online Banking system stores online statements and
`check images”); Ex. 1028 ¶ 27 (similarly alleging that “Plains Capital
`performs the step of . . . retrieving” documents and alleging “[f]or example,
`Plains Capital’s Online Banking system’s processing unit . . . retrieves”
`check images). The complaints only list the “Remote Deposit Capture”
`systems as mere examples (via a website) of the respective Online Banking
`systems alleged to infringe. See Ex. 1028 ¶ 23 (“For example, Plains
`Capital’s Online Banking system stores online statements and deposited
`check images in remotely located, separate storage systems based on the
`date associated with that document. See, e.g.,
`https://www.plainscapital.com/business/treasury-management/remote-
`deposit-capture.”); Ex. 1036 ¶ 34 (si
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