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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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`
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`FIDELITY INFORMATION SERVICES, LLC,
`Petitioner
`v.
`MIRROR IMAGING, LLC,
`Patent Owner
`______________________
`Case CBM2017-00066
`U.S. Patent No. 7,836,067
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`
`
`
`
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`JOINT PROPOSED REDACTED FINAL WRITTEN DECISION
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Paper 64
`Entered: April 18, 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 CBM2017-00066
`Patent 7,836,067 B2
`____________
`
`
`
`Before KARL D. EASTHOM, JUSTIN T. ARBES, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
`
`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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`CBM017-00066
`Patent 7,836,067 B2
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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
`1–68 of U.S. Patent No. 7,836,067 B2 (Ex. 1001, “’067 patent”), pursuant to
`§ 18 of the Leahy-Smith America Invents Act (“AIA”).1 Paper 1 (“Pet.”).
`On April 19, 2018, we instituted a covered business method patent review of
`claims 1–68 of the ’067 patent under 35 U.S.C. § 101. Paper 23 (“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
`we denied. Paper 33 (“Reh’g Dec.”); see Paper 35 (public redacted version).
`Subsequently, Patent Owner filed a Patent Owner Response (Paper
`40, “PO Resp.”),2 and Petitioner filed a Reply (Paper 46, “Reply”). With
`authorization (Paper 58), Petitioner (Paper 61, “Pet. PEG Br.”) and Patent
`Owner (Paper 60, “PO PEG Br.”) filed supplemental briefing addressing the
`impact of the Office’s 2019 Revised Patent Subject Matter Eligibility
`Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “Guidance”), available at
`https://www.federalregister.gov/documents/2019/01/07/2018-28282/2019-
`
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`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 41, 42. Accordingly, the Response
`will be made public.
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`revised-patent-subject-matter-eligibility-guidance.
`An oral hearing occurred on January 15, 2019, and the record includes
`a transcript of the hearing. Paper 62 (“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 1–68 of the ’067 patent are
`unpatentable under § 101.
`
`Related Matters
`B.
`Petitioner identifies numerous federal district court actions filed by
`Patent Owner involving the ’067 patent and related patents 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 it asserts infringement of the ’067 patent. Paper 5.
`Patent Owner also cites two recently allowed applications related to the ’067
`patent. PO Resp. 61–62 (citing Exs. 2005, 2014, 2030); see also Paper 52
`(citing a Notice of Allowance for U.S. Patent Application No. 15/990,160
`(Ex. 2034)). On April 9, 2019, we issued final written decisions in
`Cases CBM2017-00064 and CBM2017-00065 involving patents related to
`the ’067 patent.
`
`The ’067 Patent
`C.
`The ’067 patent discloses methods and systems for financial
`institutions, such as banks and credit unions, to store and retrieve financial
`documents from both on-site and off-site storage systems. Ex. 1001, [57],
`1:25–65, 2:23–35. The ’067 patent explains that conventional methods for
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`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 1:46–50. “The interface is inter-linked with the
`on-site storage system.” Id. at 1:50–51. The ’067 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 1:57–60. According to the ’067 patent,
`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 1:66–2:1. Therefore, 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
`2:1–2:7.
`Further, according to the ’067 patent, “[o]ther financial institutions do
`electronically store financial documents in on-site and off-site storage
`systems.” Id. at 2:8–9. 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 2:8–13. “That is, there is no interface
`independently inter-linked with the off-site storage system.” Id. at 2:14–15.
`Therefore, according to the ’067 patent, the financial documents in the off-
`site storage system cannot be accessed efficiently. Id. at 2:15–17. The
`financial institutions are still responsible for retrieving these documents
`through their back office production, and thus, their expenses remain high.
`Id. at 2:17–19.
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`The ’067 patent, 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 2:23–30. “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 2:30–35.
`The ’067 patent 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 2:40–61, 3:3–13. The ’067 patent
`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 2:49–53. The
`documents having parameters that are less than or equal to the
`predetermined parameter are maintained in the on-site storage system. Id. at
`2:53–55.
`“When the financial institution receives a request for a financial
`document, the financial institution compares 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.” Id. at 2:62–67. 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 2:67–3:2.
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`The “processing unit is utilized to, at least partially, automatically access one
`of the storage systems in response to the comparison of the specific
`document parameter to the predetermined parameter.” Id. at 3:2–6. 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 3:6–9. “[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 3:9–13. “After the
`requested financial document is accessed, 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 3:15–
`18.
`
`Illustrative Claims
`D.
`1. A method of obtaining an electronically-stored
`financial document from one of a first storage system and a
`second storage system with the first and second storage systems
`being different from each other wherein the first and second
`storage systems each include a plurality of financial documents
`stored therein and wherein each of the financial documents is
`associated with 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
`parameter of the financial document is greater than a
`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, through a user, a computer terminal connected
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`to the first and second storage systems through a processing
`unit;
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`submitting a request for at least one of the stored
`financial documents 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 submitted;
`accessing the first storage system through the processing
`unit when the specific document parameter is greater than the
`predetermined parameter and 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 submitted 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.
`18. A method for a financial institution to obtain a stored
`financial document from one of an off-site storage system and
`an on-site storage system with the off-site and on-site storage
`systems being different from each other 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 less than a predetermined age;
`maintaining the financial document in the on-site storage
`system when the specific document age of the financial
`document is greater than or equal to the predetermined age;
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`utilizing a computer terminal associated with the
`financial institution and connected to the off-site and on-site
`storage systems through a processing unit;
`submitting a request for the financial document 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 submitted;
`automatically accessing the off-site storage system
`through the processing unit when the specific document age is
`less than the predetermined age and automatically accessing the
`on-site storage system through the processing unit when the
`specific document age is greater than or equal to the
`predetermined age; and
`financial
`requested
`the
`automatically
`retrieving
`document from the accessed storage system as defined by the
`submitted request.
`19. A method as set forth in claim 18 further including
`the step of processing the request to locate the requested
`financial document.
`20. A method as set forth in claim 19 further including
`the step of reproducing the requested financial document after
`the request has been processed and retrieved.
`21. A method as set forth in claim 20 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.
`53. A method of accessing an electronically-stored
`financial document from one of a first storage system and a
`second storage system with the first and second storage systems
`being different from each other wherein the first and second
`storage systems each include a plurality of financial documents
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`stored therein and wherein each of the financial documents has
`an electronic image and is associated with at least one specific
`document parameter, said method comprising the steps of:
`storing a plurality of images of the financial documents
`in a first fixed medium at the first storage system when the
`specific document parameter of the financial document is
`greater than a predetermined parameter;
`storing a plurality of images of the 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 processing unit connected to the first and
`second storage systems;
`receiving a request for an image of one of the stored
`financial documents into the processing unit;
`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 received;
`accessing the first storage system when the specific
`document parameter
`is greater
`than
`the predetermined
`parameter and accessing the second storage system when the
`specific document parameter is less than or equal to the
`predetermined parameter; and
`retrieving the image of the requested financial document
`from the accessed storage system as defined by the received
`request.
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`Instituted Ground of Unpatentability
`E.
`We have instituted review on the sole asserted ground—that claims
`1–68 of the ’067 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 ’067 patent, and
`another district court preliminarily construed certain terms in the ’067 patent
`and a related patent. Pet. 41–43 (citing Exs. 1024–26). Patent Owner does
`not address claim construction of the challenged claims in its Response. We
`determine that no term requires express construction.
`
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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 4, 2017, prior to the effective date of the rule
`change.
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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 ’067 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
`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
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`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 ’067
`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
`23–27 (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 cited in the
`Petition contain redactions, and Patent Owner asserted the redactions may
`omit, inter alia, “possible exemptions” about Petitioner’s indemnity
`obligations (Paper 9, 33–34), the panel ordered the parties to meet and
`confer to agree about the filing of confidential (non-public) material by
`Petitioner. See Paper 13. 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 14, 2–
`3; Exs. 1048–53 (filed as “Board and Parties Only,” i.e., non-public
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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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`material).5 We also authorized additional briefing (collectively, “Standing
`Briefing”) by the parties to address the standing issue prior to institution.
`See Paper 13; Inst. Dec. 9–16 (addressing the briefing); Paper 14 (Patent
`Owner’s Supplemental Brief filed under seal); Paper 17 (Patent Owner’s
`redacted Supplemental Brief); Paper 18 (Petitioner’s Reply to Patent
`Owner’s Supplemental Brief filed under seal); Paper 21 (Petitioner’s
`redacted Reply).
`As explained more fully in the Decision on Institution and Rehearing
`Decision (see Inst. Dec. 9–16; 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
`’067 patent under indemnity obligations for software services Petitioner
`supplied to the banks, namely “Business Electronic Banking (‘BeB’), and/or
`Consumer Electronic Banking (‘CeB’) services” (Ex. 1032
`§ 1; Ex. 1040 § 1). See Pet. 20–27 (citing Exs. 1028–44).
`After institution, in its Response, Patent Owner maintains that
`Petitioner lacks standing to file the Petition.6 See PO Resp. 50–59.
`
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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).
`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
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`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
`51 (quoting 37 C.F.R. § 42.302 (2012) (additions 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 52–53 (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”)).
`Regarding the allegedly infringing products, Patent Owner contends
`that Petitioner fails to show that its online services, BeB and CeB, “are the
`services that infringe Mirror Imaging’s patent[].” Id. at 55. 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.” Id. 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
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`from the Decision on Institution (Inst. Dec. 9–16) 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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`Deposit Capture is supplied by FIS.” Id. at 55–56 (citing Ex 1036
`(Complaint Against Origin Bank) ¶ 24). Comparing the two customer’s
`systems, Patent Owner contends “[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).” Id. at 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. (citing Exs. 1032, 1038).
`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. 57–58. Under this first prong,
`Patent Owner maintains Petitioner failed to provide “concrete evidence”
`about its “infringement liability” obligation to indemnify Origin Bank or
`PlainsCapital. Id. at 59 (latter phrase quoting Arris, 639 F.3d at 1375; citing
`Creative Compounds, LLC v. Starmark Labs, 651 F.3d 1303, 1316–17) (Fed.
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`Cir. 2011) (emphasis by Patent Owner)).
`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 54–57), 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 26–27 (citing Pet. 24,26; Ex. 1029 ¶¶ 12–15; Ex. 1037 ¶¶ 12–15).
`Petitioner has standing under § 42.302(a) because Petitioner has been
`“charged with infringement” of the ’067 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 ’067 patent
`under applicable indemnity obligations, as set forth in the ITSA. See Pet.
`20–27 (citing Exs. 1028–44).
`
`16
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`CBM017-00066
`Patent 7,836,067 B2
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`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).
`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 ’067 patent. See Arris, 639
`F.3d at 1375. Patent Owner’s complaint against PlainsCapital and Origin
`Bank alleges infringement of the ’067 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
`
`17
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`CBM017-00066
`Patent 7,836,067 B2
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`“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 ¶¶ 5–15.
`Patent Owner’s contention that Petitioner does not allege that the BeB
`or CeB services it provides pertain specifically to the “Remote Deposit
`Capture” systems of PlainsCapital and Origin Bank does not undermine
`Petitioner’s showing. See PO Resp. 55–56 (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 Onli
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