Paper 10
`Trials@uspto.gov
`571-272-7822 Entered: September 12, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC,
`Patent Owner.
`____________
`
`
`
`Case CBM2018-00022
`Patent 9,530,137 B2
`____________
`
`
`
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: September 12, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC,
`Patent Owner.
`____________
`
`
`
`Case CBM2018-00022
`Patent 9,530,137 B2
`____________
`
`
`
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`CBM2018-00022
`Patent 9,530,137
`
`
`I. INTRODUCTION
`This is a preliminary proceeding to decide whether, under
`section 18 of the Leahy-Smith America Invents Act, Pub. L. No. 112–
`29, 125 Stat. 284, 331 (2011) (“AIA”), a covered business method
`patent review of U.S. Patent No. 9,530,137 B2 (Ex. 1001, “the
`’137 patent” or “the challenged patent”), should be instituted under
`35 U.S.C. § 324(a).1 A covered business method patent review may
`not be instituted “unless . . . the information presented in the
`petition . . . , if such information is not rebutted, would demonstrate
`that it is more likely than not that at least 1 of the claims challenged in
`the petition is unpatentable.” 35 U.S.C. § 324(a); see 37 C.F.R.
`§ 42.208. We have authority under 35 U.S.C. § 324(a).
`Apple Inc. filed a Petition requesting covered business method
`patent review of claims 1–12 of the challenged patent. Paper 3
`(“Pet.”). Patent Owner timely filed a Preliminary Response. Paper 8
`(“Prelim. Resp.”). With its Preliminary Response, Patent Owner
`provided evidence (Ex. 2001) that it filed with the Office a statutory
`disclaimer of claims 8, 10, and 11 of the ’137 patent pursuant to
`37 C.F.R. § 1.321(a). Prelim. Resp. 15 (citing Ex. 2001).
`
`
`
`1 GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 1310 (Fed. Cir. 2015)
`(describing transitional program for review of covered business
`method patents, pursuant to the AIA, as subject to “‘the standards and
`procedures of[] a post-grant review under’ . . . 35 U.S.C. §§ 321–329,”
`absent exceptions not applicable here (alteration in original) (quoting
`AIA § 18(a)(1))).
`
`2
`
`
`
`CBM2018-00022
`Patent 9,530,137
`
`
`Upon consideration of the record, as explained in detail below,
`we determine that the ’137 patent is not a covered business method
`patent and accordingly deny the Petition.
`A. Related Matters
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies
`various judicial or administrative matters that would affect or be
`affected by a decision in this proceeding. Pet. 3–4; Paper 7, 2 (Patent
`Owner’s Mandatory Notices).
`B. The ’137 Patent
`The ’137 patent is titled “Method and Apparatus for Secure
`Access Payment and Identification” and describes ways to securely
`authenticate the identity of a plurality of users. Ex. 1001, [54], [57],
`1:43–55.
`
`1. Written Description
`The challenged patent describes a secure database called a
`“Universal Secure Registry,” which can be used as “a universal
`identification system” and/or “to selectively provide information about
`a person to authorized users.” Id. at 4:8–11. The ’137 patent states
`that the USR database is designed to “take the place of multiple
`conventional forms of identification.” Id. at 4:23–25. The ’137 patent
`further states that various forms of information can be stored in the
`database to verify a user’s identity and prevent fraud:
`(1) algorithmically generated codes, such as a time-varying multi-
`character code or an “uncounterfeitable token,” (2) “secret
`information” like a PIN or password, and/or (3) a user’s “biometric
`information,” such as fingerprints, voice prints, an iris or facial scan,
`
`3
`
`
`
`CBM2018-00022
`Patent 9,530,137
`
`DNA analysis, or even a photograph. See id. at 14:1–7, 14:21–40,
`44:54–61, Fig. 3. Accordingly, the ’137 patent discloses that the
`system can be used to selectively provide authorized users with access
`to perform transactions involving various types of confidential
`information stored in a secure database. See, e.g., id. at 4:8–15. “For
`example, a person may wish to participate in a transaction to give a
`potential employer one-time access to job application information 44.”
`Id. at 17:11–13.
`The ’137 patent specifically discloses that an event enabled or
`prevented by the system “may be a transaction (e.g., a financial
`transaction), access control (e.g., physical or electronic access), or
`other action that is either enabled or prevented.” Id. at 6:58–61, see
`also 28:49–50 (“[v]arious embodiments can be employed to control
`access to a physical facility.”). Certain embodiments in the ’137 patent
`illustrate that the transactions may provide “Address Information,”
`“Financial Information,” “Medical Information,” or “Tax
`Information.” Id. at 13:42–14:7, Figs. 3, 4; see also 15:6–57, 17:11–
`13, 23:18–21, 24:12–16, 24:46–49. Still other embodiments of the
`’137 patent disclose transactions involving “any of a wide variety of
`acts including: authorizing a withdrawal of money from a user’s
`account, permitting the user access to a secure area, permitting a user
`to view medical information concerning themselves or a third party, or
`permitting the user to access other confidential information.” Id. at
`42:64–43:3.
`
`4
`
`
`
`CBM2018-00022
`Patent 9,530,137
`
`
`2. Illustrative Claims
`Claims 1 and 12 are independent and illustrate the challenged
`
`subject matter.
`1. A system for authenticating a user for enabling a transaction,
`the system comprising:
`a first device including:
`a first processor, the first processor programmed to
`authenticate a user of the first device based on secret
`information and to retrieve or receive first biometric
`information of the user of the first device;
`a first wireless transceiver coupled to the first processor and
`programmed to transmit a first wireless signal including
`first authentication information of the user of the first
`device; and
`a biometric sensor configured to capture the first biometric
`information of the user;
`wherein the first processor is programmed to generate one
`or more signals
`including
`the
`first authentication
`information, an indicator of biometric authentication, and a
`time varying value in response to valid authentication of
`the first biometric information, and to provide the one or
`more signals including the first authentication information
`for transmitting to a second device; and
`wherein the first processor is further configured to receive
`an enablement signal from the second device; and
`the system further including the second device that is
`configured to provide the enablement signal indicating that the
`second device approved the transaction based on use of the one
`or more signals;
`wherein the second device includes a second processor that
`is configured to provide the enablement signal based on the
`indication of biometric authentication of the user of the first
`device, at least a portion of the first authentication
`information, and second authentication information of the
`user of the first device to enable and complete processing
`of the transaction.
`Id. at 45:27–61.
`
`5
`
`
`
`CBM2018-00022
`Patent 9,530,137
`
`
`12. A system for authenticating a user for enabling a transaction,
`the system comprising:
`a first device including:
`a biometric sensor configured to capture a first biometric
`information of the user;
`a first processor programmed to: 1) authenticate a user of the
`first device based on secret information, 2) retrieve or receive
`first biometric information of the user of the first device, 3)
`authenticate the user of the first device based on the first
`biometric, and 4) generate one or more signals including first
`authentication information, an indicator of biometric
`authentication of the user of the first device, and a time
`varying value; and
`a first wireless transceiver coupled to the first processor and
`programmed to wirelessly transmit the one or more signals to
`a second device for processing;
`wherein generating the one or more signals occurs responsive
`to valid authentication of the first biometric information; and
`wherein the first processor is further programmed to receive
`an enablement signal indicating an approved transaction from
`the second device, wherein the enablement signal is provided
`from the second device based on acceptance of the indicator
`of biometric authentication and use of the first authentication
`information and use of second authentication information to
`enable the transaction.
`Id. at 46:55–47:14.
`C. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–12 are unpatentable under 35
`
`U.S.C. § 101 as being directed to an abstract idea. Pet. 2, 25–26, 32.
`
`II. DISCUSSION
`
`A. Claim Construction
`In a covered business method patent review, we currently
`construe claim terms in an unexpired patent according to their broadest
`reasonable construction in light of the specification of the patent in
`
`6
`
`
`
`CBM2018-00022
`Patent 9,530,137
`
`which they appear. 37 C.F.R. § 42.200(b); Versata Dev. Grp., Inc. v.
`SAP Am., Inc., 793 F.3d 1306, 1328 (Fed. Cir. 2015) (affirming use of
`the broadest reasonable construction standard in a covered business
`method patent review); cf. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct.
`2131, 2144–46 (2016) (upholding the use of the broadest reasonable
`interpretation standard in an inter partes review). 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. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007). To rebut this presumption by acting as a
`lexicographer, the patentee must give the term a particular meaning in
`the specification with “reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In
`addition, the broadest reasonable construction of a claim term cannot
`be so broad that the construction is unreasonable under general claim
`construction principles. Cf. Microsoft Corp. v. Proxyconn, Inc., 789
`F.3d 1292, 1298 (Fed. Cir. 2015) (discussing broadest reasonable
`construction in the context of an inter partes review).
`Petitioner proposes constructions for several terms, including
`“biometric information,” “secret information,” and “authentication
`information.” Pet. 27–32. Patent Owner does not address directly
`Petitioner’s proposed constructions. Prelim. Resp. 11. Rather, Patent
`Owner contends construction of the claim terms is unnecessary. Id.
`We agree with Patent Owner. Specifically, we conclude that no
`term needs to be construed expressly in order for us to determine
`whether a covered business method patent review should be instituted.
`
`7
`
`
`
`CBM2018-00022
`Patent 9,530,137
`
`
`B. Covered Business Method Patent
`The AIA defines a “covered business method patent” as “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 . . . .” AIA § 18(d)(1);
`see 37 C.F.R. § 42.301(a). “[Section] 18(d)(1) directs us to examine
`the claims when deciding whether a patent is a [covered business
`method] patent.” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331,
`1340 (Fed. Cir. 2016); Unwired Planet, LLC v. Google Inc., 841 F.3d
`1376, 1382 (Fed. Cir. 2016) (CBM patents “are limited to those with
`claims that are directed to methods and apparatuses of particular types
`and with particular uses ‘in the practice, administration, or
`management of a financial product or service’” (emphasis added); see
`also Secure Axcess, LLC v. PNC Bank Nat’l Assoc., 848 F.3d 1370,
`1378 (Fed. Cir. 2017) (“The statutory definition by its terms makes
`what a patent ‘claims’ determinative of the threshold requirement for
`coming within the defined class” of a covered business method patent.)
`(cert. granted, judgement vacated as moot by PNC Bank Nat. Ass’n. v.
`Secure Axcess, LLC, 138 S. Ct. 1982 (May 14, 2018)).
`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); cf. Versata, 793 F.3d at
`1326–27 (accepting single claim analysis to determine whether to
`institute a covered business method patent review). “When properly
`
`8
`
`
`
`CBM2018-00022
`Patent 9,530,137
`
`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; see also Versata, 793 F.3d at 1312–13,
`1325–26 (identifying a qualifying claim); Blue Calypso, 815 F.3d at
`1339–40 (identifying a qualifying claim); SightSound Techs., LLC v.
`Apple Inc., 809 F.3d 1307, 1315–16 (Fed. Cir. 2015) (identifying a
`qualifying claim).
`C. Effect of Statutory Disclaimer
`Patent Owner provided, with its Preliminary Response, evidence
`that it filed with the Office a statutory disclaimer of claims 8, 10, and
`11 of the challenged patent pursuant to 35 U.S.C. § 253(a) and
`37 C.F.R. § 1.321(a). Ex. 2001, 1; see Prelim. Resp. 15. The
`disclaimer of a claim “shall . . . be considered as part of the original
`patent.” 35 U.S.C. § 253(a). The language “considered as part of the
`original patent” means that a patent subject to a disclaimer under
`§ 253(a) “is treated as though the disclaimed claims never existed.”
`Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir.
`1998) (“This court has interpreted the term ‘considered as part of the
`original patent’ in section 253 to mean that the patent is treated as
`though the disclaimed claims never existed”) (citing Altoona Publix
`Theatres v. Am. Tri-Ergon Corp., 294 U.S. 477, 492 (1935)); Guinn v.
`Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (holding that the Board’s
`interference jurisdiction under 35 U.S.C. § 291 required “the existence
`of an interference, and a claim that ‘never existed’ [due to a statutory
`disclaimer] cannot form the basis for an interference”); Great West
`Cas. Co. v. Intellectual Ventures II LLC, Case CBM2015-00171, slip
`
`9
`
`
`
`CBM2018-00022
`Patent 9,530,137
`
`op. at 7 (PTAB Feb. 9, 2016) (Paper 10) (the Board treats disclaimed
`claims “as never having existed”); Google Inc. v. SimpleAir, Inc., Case
`CBM2015-00019, slip op. at 14–15 (PTAB May 19, 2014) (Paper 11)
`(“[W]e treat the [challenged] patent as though [the disclaimed claim]
`never existed.”). Thus, even though claims of the challenged patent
`existed at the time the Petition here was filed, we must now treat the
`challenged patent as if it had never included those claims.
`
`1. Disclaimed Claims Challenged in the Petition
`Of the challenged claims, Patent Owner disclaimed claims 8, 10,
`and 11. Ex. 2001, 1. A covered business method patent review cannot
`be instituted based on disclaimed claims. 37 C.F.R. § 42.207(e) (“The
`patent owner may file a statutory disclaimer under 35 U.S.C. § 253(a)
`in compliance with 37 C.F.R. § 1.321(a), disclaiming one or more
`claims in the patent. No post-grant review will be instituted based on
`disclaimed claims.”).
`Specifically, the decision whether to institute a CBM patent
`review is based on whether a patent “is” a covered business method
`patent, which in turn is based on what the patent “claims” at the time
`of the institution decision, not as the claims may have existed at some
`previous time. See AIA §§ 18(a)(1)(E) (using the present tense “is”),
`18(d)(1) (using the present tense “claims”); 35 U.S.C. § 324(a);
`37 C.F.R. § 42.207(e) (when a patent owner files a statutory
`disclaimer, “[n]o post-grant review will be instituted based on
`disclaimed claims”); Facebook, Inc. v. Skky, LLC, 2017 WL 4349404,
`*5 (PTAB, Sept. 28, 2017) (§ II.B.2 designated precedential Dec. 21,
`2017) (“CBM patent review eligibility is determined based on the
`
`10
`
`
`
`CBM2018-00022
`Patent 9,530,137
`
`claims of the challenged patent as they exist at the time of the decision
`whether to institute, and statutorily disclaimed claims must be treated
`as if they never existed.”).
`Accordingly, no covered business method patent review will be
`instituted for disclaimed claims 8, 10, and 11. Nevertheless, our
`analysis continues because not all of the claims challenged in the
`Petition have been disclaimed by Patent Owner.
`2. Remaining Claims Challenged in the Petition
`Petitioner challenges some claims that have not been disclaimed
`by Patent Owner—claims 1–7, 9, and 12. Pet. 32. For the following
`reasons, we determine Petitioner has not established that these
`challenged patent claims qualify for a covered business method patent
`review.
`Petitioner identifies seven claims that it contends satisfy the
`threshold financial requirement on the basis of their claim language.
`Pet. 18–19 (identifying claims 1, 3, 4, 12, and disclaimed claims 8, 10,
`11). According to Petitioner, claims 1 and 12 disclose systems for
`“authenticating a user for enabling a transaction” and contemplate the
`transmission and receipt of an “enablement signal” that allows or
`denies the transaction, while claims 3 and 4 explicitly recite a
`“transaction.” Id. Petitioner notes that the specification makes clear
`that the “transactions” recited in the claims can be financial in nature.
`Id. at 19 (citing 6:57–61 (“In various embodiments, the event that is
`enabled or prevented may be a transaction (e.g., a financial
`transaction), access control (e.g., physical or electronic access) or other
`action that is either enabled or prevented.”); 8:25–28 (“In one
`
`11
`
`
`
`CBM2018-00022
`Patent 9,530,137
`
`embodiment the system further comprises a networked credit card
`validation-information entity configured to approve and deny financial
`transactions based on authentication of the user.”); Figs. 7–10
`(illustrating transmission of credit card and/or bank account
`information)).
`Patent Owner disputes Petitioner’s contentions, arguing that
`claims 1, 3, 4, and 12 fail to recite any limitation that is explicitly or
`inherently financial. Prelim. Resp. 14. According to Patent Owner,
`“Petitioner’s reliance on the term ‘transaction’ in the claims as the
`statutory basis for CBM review of the ’137 patent impermissibly
`expands the scope of CBM review, and ignores Federal Circuit
`precedent squarely contradicting Petitioner’s broad interpretation of
`the law.” Id. (citing Unwired Planet, 841 F.3d at 1382 (“reliance on
`whether [a] patent claims activities ‘incidental to’ or ‘complementary
`to’ a financial activity . . . was not in accordance with law”); Secure
`Axcess, 848 F.3d at 1381 (“such a definition of a CBM patent is
`beyond the scope of the statutory standard”)). Rather, Patent Owner
`notes, “a CBM patent must contain something ‘explicitly or inherently
`financial in the construed claim language.’” Id. (citing Blue Calypso,
`815 F.3d at 1340 (emphasis added by Patent Owner)).
`We agree with Patent Owner that not one of claims 1, 3, 4, and
`12 provides a basis for the challenged patent’s CBM eligibility.
`Specifically, these remaining challenged claims on their face do not
`evince claiming a financial product or service, and the written
`description describes the invention as being broader than a system for
`secure access payment and the authentication of a purchaser’s identify.
`
`12
`
`
`
`CBM2018-00022
`Patent 9,530,137
`
`See, e.g., Ex. 1001, 13:42–14:7, Figs. 3, 4 (encompassing transactions
`that may provide “Address Information,” “Financial Information,”
`“Medical Information,” or “Tax Information.”); 42:64–43:3
`(encompassing transactions involving “any of a wide variety of acts
`including: authorizing a withdrawal of money from a user’s account,
`permitting the user access to a secure area, permitting a user to view
`medical information concerning themselves or a third party, or
`permitting the user to access other confidential information.”). We do
`not consider the term “transaction” by itself to be explicitly or
`inherently financial, because the ’137 patent indicates that a particular
`transaction is financial in nature by using the term “financial
`transaction.” See Ex. 1001, 6:59, 7:9, claim 11. We further note
`Petitioner did not propose a construction of “transaction” as being
`inherently financial in nature. If there is “nothing explicitly or
`inherently financial in the construed claim language,” a patent does not
`meet the statutory definition under AIA Section 18(d)(1) and is
`ineligible for CBM review. See Blue Calypso, 815 F.3d at 1340; see
`also, e.g., Secure Axcess, 848 F.3d at 1381 (“Necessarily, the statutory
`definition of a CBM patent requires . . . a claim that contains . . . a
`financial activity element.”).
`Accordingly, we determine Petitioner has failed to meet its
`burden of showing that any one of challenged claims 1, 3, 4, and 12 is
`eligible for covered business method patent review. Therefore, we do
`not institute a covered business method patent review for the ’137
`patent.
`
`13
`
`
`
`CBM2018-00022
`Patent 9,530,137
`
`
`3. Conclusion
`In sum, we do not institute a covered business method patent
`review for challenged claims 8, 10, and 11 of the ’137 patent that were
`disclaimed by Patent Owner after the Petition was filed. Nor do we
`institute a covered business method patent review for challenged
`claims 1–7, 9, and 12 because Petitioner has failed to demonstrate that
`any one of these challenged claims render the patent eligible for
`covered business method patent review.
`
`III. ORDER
`After due consideration of the record before us and for the
`foregoing reasons, it is:
`ORDERED that the Petition is denied and no covered business
`method patent review is instituted.
`
`
`
`
`
`
`
`
`
`
`
`
`
`14
`
`
`
`CBM2018-00022
`Patent 9,530,137
`
`FOR PETITIONER:
`Monica Grewal
`Ben Fernandez
`WILMER CUTLER PICKERING HALE AND DORR LLP
`monica.grewal@wilmerhale.com
`ben.fernandez@wilmerhale.com
`
`FOR PATENT OWNER:
`
`James M. Glass
`Tigran Guledjian
`Christopher A. Mathews
`Nima Hefazi
`Richard Lowry
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`jimglass@quinnemanuel.com
`tigranguledjian@quinnemanuel.com
`chrismathews@quinnemanuel.com
`nimahefazi@quinnemanuel.com
`richardlowry@quinnemanuel.com
`
`
`
`
`
`
`
`
`
`
`
`
`15
`
`
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