Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 19
`Entered: March 23, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`TEXTILE COMPUTER SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00296
`Patent 8,505,079 B2
`____________
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 19
`Entered: March 23, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`TEXTILE COMPUTER SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00296
`Patent 8,505,079 B2
`____________
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
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`IPR2017-00296
`Patent 8,505,079 B2
`
`I.
`
`INTRODUCTION
`Unified Patents Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) to
`institute an inter partes review of claims 1, 3, 6–9, 11, 13, and 16–19 of U.S.
`Patent No. 8,505,079 B2 (Ex. 1001, “the ’079 patent”) pursuant to 35 U.S.C.
`§§ 311–19. Textile Computer Systems, Inc. (“Patent Owner”) filed a Patent
`Owner Preliminary Response. Paper 8 (“Prelim. Resp.”). We instituted an
`inter partes review of claims 1, 3, 6–9, 11, 13, and 16–19 on certain grounds
`of unpatentability alleged in the Petition (Paper 9, “Dec.”).
`After institution of trial, Patent Owner filed a Patent Owner Response
`(Paper 13, “PO Resp.”). Petitioner filed a Reply (Paper 17, “Reply”).
`Neither Patent Owner nor Petitioner requested an oral hearing. See
`Paper 18.
`The Board has jurisdiction under 35 U.S.C. § 6(b). This Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a) as to the patentability of
`the claims for which we instituted trial. For the reasons that follow, we
`conclude that Petitioner has not demonstrated by a preponderance of the
`evidence that claims 1, 3, 6–9, 11, 13, and 16–19 of the ’079 patent are
`unpatentable.
`
`II.
`
`BACKGROUND
`Related Proceedings
`A.
`The parties identify the following former proceedings1 involving the
`’079 patent: Textile Comp. Sys., Inc. v. Fort Worth City Credit Union, No.
`2:16-cv-01048 (E.D. Tex.); Textile Comp. Sys., Inc. v. Sabine Fed. Credit
`Union, No. 2:16-cv-01047 (E.D. Tex.); and Textile Comp. Sys., Inc. v.
`
`
`1 We take notice that all of the cases have settled.
`
`2
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`E. Tex. Prof’l Credit Union, No. 2:16-cv-00702 (E.D. Tex.). Pet. 73;
`Paper 4, 1.
`
`The ’079 Patent
`B.
`The ’079 patent “relates to security protocols for use in securing
`and/or restricting access to personal other confidential information, physical
`locations and the like.” Ex. 1001, 1:6–8. According to the ’079 patent, the
`protection of personal information “is of ever increasing concern” and has
`led to the use of “various security protocols employed for the protection of
`such resources,” which “almost universally include[] some means for
`authenticating the identity of a person, entity, device or the like attempting
`to gain access to a secured resource.” Id. at 1:16–28. However, “a security
`breach in connection with a single secured resource may jeopardize the
`security of all other secured resources.” Id. at 1:42–44.
`The ’079 patent is directed to improving “the prior art by providing a
`system and related method by which authentication may be more securely
`conducted.” Id. at 1:45–49. The ’079 patent provides “a system and related
`method that is robust in specific implementation and readily usable” and “is
`economical in implementation and therefore readily accessible to virtually
`any application.” Id. at 1:49–56.
`The invention disclosed in the ’079 patent is a transaction protocol
`between three parties—the end user (for example, a purchaser of an item), a
`service client (for example, a seller of goods or services), and a service
`provider (for example, a credit card processor)—that is conducted with six
`messaging steps. See, e.g., id. at Figs. 1, 4, 1:60–2:7, 2:27–38, 4:15–47,
`7:14–8:3. Figure 4 of the ’079 patent, as annotated by Petitioner (Pet. 3), is
`shown below:
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`Figure 4 shows “various interactions [that] generally take place during the
`operation of the authentication system and method of the present invention”
`(Ex. 1001, 3:15–17) in which the six different messaging steps are color
`coded based on the sender—blue for the service client, yellow for the end
`user, and green for the service provider (see Pet. 2–4).
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`4
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`First, the service client sends data that will be used to generate a
`request to the end user. Ex. 1001, Fig. 4, 5:35–45. Second, the end user
`sends a request based on the received data to the service provider. Id. at Fig.
`4, 5:45–49. Once the service provider receives the message, it “determines
`whether the end user 34 making the request is authorized or otherwise
`permitted to make use of the authentication system 30.” Id. at 5:50–54; see
`also id. at 13:34–53. The system will continue only if the service provider
`authenticates the identity of the end user; otherwise, it will terminate. Id. at
`5:54–60, 13:34–53. The ’079 patent states that a critical aspect of the
`present invention is preventing the service client from having access to the
`common identifier of the secured resource that can be used to gain access to
`the secured resource without again gaining authorization from the end user:
`In a critical aspect of the authentication system 30 and
`method 46 of the present invention, an additional security
`measure is implemented by requiring that the service client 33 be
`restricted from access to the common identifier for the secured
`resource, e.g. the account number for a credit card or financial
`deposit account; the Social Security Number of a patient; the
`account number of an ATM card; or the like. . . .
`In accordance with a critical aspect of the present invention,
`however, the automobile fueling station, restaurant or on-line
`retailer cannot be provided with or otherwise be made aware of
`either the consumer’s credit card or checking account number
`and also must not be given any information that would allow the
`automobile fueling station, restaurant or on-line retailer to repeat
`the transaction without again obtaining authorization from the
`consumer.
`Id. at 8:4–10, 10:29–36 (emphases added); see also id. at 7:14–46
`(emphasizing the importance of restricting the service client from having full
`access to the secured resource).
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`Third, after the service provider determines that the end user is
`authorized to access a secured resource, the service provider sends a
`confirmation back to the end user. Id. at Fig. 4, 6:12–18. Fourth, the end
`user sends an authorization credential to the service client, which will allow
`limited access to the secured resource. Id. at Fig. 4, 6:18–21, 6:45–7:3.
`Fifth, the service client sends a message to the service provider with the
`authentication credential. Id. at Fig. 4, 6:45–7:3. Sixth, after confirming the
`authentication credential, the service provider sends the service client the
`secured resource. Id. at Fig. 4, 7:4–13, 16:16–40.
`
`The Challenged Claims
`C.
`We instituted trial on claims 1, 3, 6–9, 11, 13, and 16–19. Claims 1
`and 11 are independent claims. Claim 1 is illustrative of the challenged
`claims and is reproduced below:
`1.
`An authentication system for authenticating the identity of
`a requester of access by an unauthorized service client to a
`secured resource, said authentication system comprising:
`a messaging gateway having a first set of instructions embodied
`in a computer readable medium, said first set of instructions
`operable to receive from a requester purporting to be an
`authorized user of a secured resource a request for access by an
`unauthorized service client to said secured resource;
`a server in secure communication with said messaging gateway,
`said server having a second set of instructions embodied in a
`computer readable medium operable to determine a key string
`known to both said secured resource and the authorized user said
`requestor purports to be, said key string being adapted to provide
`a basis for authenticating the identity of said requester;
`a service user interface in communication with said server, said
`service user interface having a third set of instructions embodied
`in a computer readable medium operable to receive input from
`said unauthorized service client;
`
`6
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`wherein said second set of instructions is further operable to
`receive an authentication credential from said unauthorized
`service client associated with said request for access, said
`authentication credential having been provided
`to said
`unauthorized service client by said requestor; and
`wherein said second set of instructions is further operable to
`evaluate said authentication credential to authenticate the
`identity of said requester.
`Id. at 17:28–57.
`
`Instituted Grounds of Unpatentability
`D.
`We instituted inter partes review of claim 1, 3, 6–9, 11, 13, and 16–19
`of the ’079 patent on the following grounds:
`Basis2
`Challenged Claims
`References
`Johnson3 and Stambaugh4
`§ 103(a) 1, 6, 7, 9, 11, 16, 17, and 19
`Johnson, Stambaugh, and Sellars5 § 103(a) 3, 8, 13, and 18
`
`
`In support of its challenge, Petitioner relies on the Declaration of
`Stephen Craig Mott (Ex. 1007). Patent Owner relies on the Declaration of
`Richard Oglesby (Ex. 2004).
`
`
`2 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. § 100 et seq. effective on March 16, 2013. Because the ’079 patent
`issued from an application filed before March 16, 2013, we apply the pre-
`AIA versions of the statutory bases for unpatentability.
`3 U.S. Patent Application Publication No. 2006/0235796 A1 (publ. Oct. 19,
`2006) (Ex. 1004, “Johnson”).
`4 U.S. Patent No. 7,657,489 B2 (issued Feb. 2, 2010) (Ex. 1005,
`“Stambaugh”).
`5 U.S. Patent Application Publication No. 2006/0173794 A1 (publ. Aug. 3,
`2006) (Ex. 1006, “Sellars”).
`
`7
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`III. ANALYSIS
`Constitutionality of Inter Partes Review Proceedings
`A.
`As a preliminary matter, Patent Owner argues that inter partes review
`proceedings are unconstitutional. PO Resp. 51–55. As Petitioner points out,
`however, and as Patent Owner admits, “current binding Federal Circuit
`precedent holds that inter partes reviews are not unconstitutional.” Reply 26
`(citing MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284 (Fed.
`Cir. 2015)); see PO Resp. 52.
`
`Claim Construction
`B.
`In an inter partes review, 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. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016). We
`interpret claim terms using “the broadest reasonable meaning of the words in
`their ordinary usage as they would be understood by one of ordinary skill in
`the art, taking into account whatever enlightenment by way of definitions or
`otherwise that may be afforded by the written description contained in the
`applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
`1997). “Under a broadest reasonable interpretation, words of the claim must
`be given their plain meaning, unless such meaning is inconsistent with the
`specification and prosecution history.” Trivascular, Inc. v. Samuels, 812
`F.3d 1056, 1062 (Fed. Cir. 2016).
`There are two exceptions to giving a term its plain meaning: “1)
`when a patentee sets out a definition and acts as his own lexicographer,” and
`“2) when the patentee disavows the full scope of a claim term either in the
`specification or during prosecution.” Thorner v. Sony Computer Entm’t Am.
`
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`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). In order to act as a
`lexicographer, a patentee must “clearly set forth a definition of the disputed
`claim term” and “clearly express an intent to define the term.” Id.; see also
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (holding that an
`applicant may act as his own lexicographer by providing a definition of the
`term in the specification with “reasonable clarity, deliberateness, and
`precision”). Similarly, disavowal requires that “the specification [or
`prosecution history] make[ ] clear that the invention does not include a
`particular feature.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys.,
`Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see also In re Abbott Diabetes
`Care Inc. 696 F.3d 1142, 1149–50 (Fed. Cir. 2012) (holding that the
`broadest reasonable interpretation of the claim was limited when the
`specification “‘repeatedly, consistently, and exclusively’ depict[ed] an
`[embodiment] without external cables or wires while simultaneously
`disparaging sensors with external cables or wires”) (quoting Irdeto Access,
`Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1303 (Fed. Cir. 2004)).
`We need only construe those claim limitations “that are in
`controversy, and only to the extent necessary to resolve the controversy.”
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999)).
`Petitioner proposes constructions of three terms: “unauthorized
`service client,” “messaging gateway,” and “key string.” Pet. 13–16. Patent
`Owner proposes express constructions for “key string,” “secured resource,”
`and “input.” PO Resp. 25–33. In our Decision on Institution, we construed
`the terms “key string,” “secured resource,” and “input” as follows.
`
`9
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`Claim term
`“key string”
`
`“input”
`
`Construction
`Broad enough to encompass an ordered
`sequence of any subset of symbols selected
`from a set of symbols wherein each symbol
`forming the set may be represented in both a
`format that may be perceived by an end user
`and a format that may be recognized by
`software or hardware and is known to both
`said secured resource and the authorized user
`said requestor purports to be and adapted to
`provide a basis for authenticating the identity
`of said requester.6
`
`Dec. 8–10
`“secured resource” The claims require the authorized user to
`control access to the secured resource, but do
`not require the authorized user to otherwise
`control the secured resource.
`
`Dec. 10–11
`Broad enough to encompass any type of
`input, including input composed of only the
`authentication credential.
`
`Dec. 11–12
`
`
`In its Response, Patent Owner argues that we erred in construing those
`terms. PO Resp. 25–33. For the reasons discussed below, we are persuaded,
`
`
`6 In our Decision, we declined to limit the key string to one that does not
`reveal the common identifier of the secured resource, such as the bank
`account or credit card number, or any other information that would allow the
`unauthorized service client to gain access to the secured resource without
`again obtaining authorization from the authorized user. Dec. 8–10.
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`with the benefit of the full record before us, to alter our construction of the
`claim term “key string” as argued by Patent Owner during trial.7
`
`“Key String”
`1.
`Petitioner asserts that the broadest reasonable construction of “key
`string” is broad enough to encompass:
`an ordered sequence of any subset of symbols selected from a set
`of symbols wherein each symbol forming the set may be
`represented in both a format that may be perceived by an end user
`34 and a format that may be recognized by software or hardware
`that may be used to provide a basis for authenticating the identity
`of the requester.
`Pet. 16 (citing Ex. 1001, 15:29–36).
`Petitioner further argues that Patent Owner’s attempt to limit the
`scope of the claim term is premised on “the claims requir[ing] the ‘key
`string’ to be the same as the ‘authentication credential.’” Reply 3.
`According to Petitioner:
`It is well-established that “a particular embodiment appearing in
`the written description may not be read into a claim when the
`claim language is broader than the embodiment.” SuperGuide
`Corp. v. DirectTV Enters., Inc., 358 F.3d 870, 875 (Fed Cir.
`2004). Therefore, the Board should reject [Patent Owner’s]
`underlying requirement that the “key string” must necessarily be
`the same as the “authentication credential.” Consequently,
`[Patent Owner’s] criticisms of the Board’s construction should
`
`
`7 As we noted in our Decision, we had not yet “made a final determination
`as to . . . the construction of any claim term.” Dec. 31. Additionally, during
`trial, Petitioner had the opportunity to—and did in fact—dispute Patent
`Owner’s claim construction arguments and argue how the claims allegedly
`are unpatentable under Patent Owner’s proposed construction. See, e.g.,
`Reply 20–21 (Petitioner argues Johnson teaches the input limitation of
`claims 1 and 11 under Patent Owner’s proposed construction).
`
`11
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`be disregarded because they are based on this erroneous
`requirement.
`Reply 4.
`Petitioner further argues that there is no need to construe this
`limitation because “[Patent Owner] does not contend Johnson’s payment
`token fails to teach [Patent Owner’s] construction of ‘key string.’” Id.
`Patent Owner argues that “[t]he Board’s conclusion that the key string
`can include the primary account number (sensitive data element) is contrary
`to the specification.” PO Resp. 26. Relying on the same portion of the
`’079 patent as Petitioner, Patent Owner contends a “string” is “an ordered
`sequence of any subset of symbols selected from a set of symbols wherein
`each symbol forming the set may be represented in both a format that may
`be perceived by an end user and a format that may be recognized by
`software or hardware.” Id. (citing Ex. 1001, 15:29–41). Additionally, based
`on various examples in the ’079 patent, Patent Owner contends a “key
`string” must not only provide a basis for authenticating the identity of the
`end user, but must also restrict access of the common identifier for the
`secure resource to the service client, such as the merchant:
`The specification also describes the requirements for the content
`of the key string. In particular, the content of the ‘key string’
`must provide a basis to authenticate the identity of the end user
`to the service provider and at the same time restrict access to the
`common identifier for the secured resource to the service client
`(merchant).
`Id. at 26–27 (citing Ex. 1001, 8:4–10). According to Patent Owner, this
`construction of key string “does not improperly import a limitation of a
`specific embodiment into the claim but rather reads the term consistently
`with explicit requirement in the specification regarding the content of the
`
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`key string in practicing the invention.” Id. at 28 (emphasis omitted) (citing
`Ex. 2004 ¶¶ 49–52).
`The ’079 patent contains an express definition of the term “string”:
`It is now noted that as used herein a “string” shall for purposes
`of the present invention be expressly defined to mean “an ordered
`sequence of any subset of symbols selected from a set of symbols
`wherein each symbol forming the set may be represented in both
`a format that may be perceived by an end user 34 and a format
`that may be recognized by software or hardware,” e.g. the set of
`all alphabetic and numeric characters in the English language.
`Ex. 1001, 15:29–36 (emphasis added). This express definition describes the
`format of a “string” as that term is used in the ’079 patent. It does not
`describe, however, the content of the claimed “key string” or how it is used.
`As to those aspects, independent claims 1 and 11 require that the key string
`be “known to both said secured resource and the authorized user said
`requestor purports to be” and “adapted to provide a basis for authenticating
`the identity of said requester.” Id. at 17:40–42, 18:48–53.
`Moreover, based on the complete record, we agree with Patent Owner
`and Mr. Oglesby that the system (claim 1) and method (claim 11) recited in
`the claims must prohibit the service client from accessing a common
`identifier of the secured resource, such as the key string used to authenticate
`the identity of the end user. See PO Resp. 26–28; Ex. 2004 ¶¶ 50–53.
`We begin with the words of the claim. The server limitation recited in
`claim 1 and the determining limitation recited in claim 11 focus on the
`method and apparatus used by the server to authenticate the identity of the
`authorized user who is seeking access to the secured resource. Specifically,
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`the first limitation of claim 18 recites a messaging gateway that receives a
`request from a requester purporting to be the authorized user seeking to
`allow an unauthorized service client access to a secured resource: “a
`messaging gateway . . . receiv[ing] from a requester purporting to be an
`authorized user of a secured resource a request for access by an unauthorized
`service client to said secured resource.” Ex. 1001, 17:31–36.
`The claim continues by reciting a server in communication with the
`messaging gateway that received the request. Id. at 17:37–43. The server
`includes a set of instructions for “determin[ing] a key string known to both
`[the] secured resource and the authorized user said request[e]r purports to
`be, [the] key string being adapted to provide a basis for authenticating the
`identity of [the] requester.” Id. As discussed in the Specification, this refers
`to the secured resource (e.g., service provider) determining whether the
`authorized user is authorized to use the system: “Once a submitted request
`message 84 is received by the service provider 36, the service provider 36
`preferably determines whether the end user 34 making the request is
`authorized or otherwise permitted to make such use of the authentication
`system 30.” Id. at 5:50–54 (emphasis added).
`According to the portion of the ’079 patent cited by Patent Owner
`(PO Resp. 26–27), preventing the service client, such as a merchant, from
`having access to the common identifier that is used to authenticate the
`authorized user when the authorized user requests access of the secured
`resource for a service client is a critical aspect of the present invention:
`
`
`8 We focus our analysis on claim 1. Claim 11 recites substantially the same
`limitations as a method. Compare Ex. 1001, claim 1, with id., claim 11.
`
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`In a critical aspect of the authentication system 30 and
`method 46 of the present invention, an additional security
`measure is implemented by requiring that the service client 33 be
`restricted from access to the common identifier for the secured
`resource, e.g. the account number for a credit card or financial
`deposit account; the Social Security Number of a patient; the
`account number of an ATM card; or the like.
`Id. at 8:4–10 (emphasis added); see also id. at 10:29–36 (“In accordance
`with a critical aspect of the present invention, however, the automobile
`fueling station, restaurant or on-line retailer cannot be provided with or
`otherwise be made aware of either the consumer’s credit card or checking
`account number and also must not be given any information that would
`allow the automobile fueling station, restaurant or on-line retailer to repeat
`the transaction without again obtaining authorization from the consumer.”
`(emphasis added)). The ’079 patent further emphasizes the importance of
`restricting the service client from having full access to the secured resource.
`Id. at 7:14–46.
`Our reviewing court has found disavowal or disclaimer of claim scope
`based on clear and unmistakable statements by the patentee that limit the
`claims, such as “the present invention includes . . .” or “the present invention
`is . . .” or “all embodiments of the present invention are . . . .” See, e.g.,
`Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir.
`2013); Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1316–19
`(Fed. Cir. 2006); SciMed, 242 F.3d at 1343–44. Similarly, our reviewing
`court also has limited a claim element to a feature of the preferred
`embodiment when the specification described that feature as a “very
`important feature . . . in an aspect of the present invention,” or as a “critical
`aspect of the present invention.” Inpro II Licensing, S.A.R.L. v. T-Mobile
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`USA Inc., 450 F.3d 1350, 1354–55 (Fed. Cir. 2006); Curtiss-Wright Flow
`Control Corp. v. Velan, Inc., 438 F.3d 1374, 1379–80 (Fed. Cir. 2006); see
`also Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1367–68
`(Fed. Cir. 2007) (limiting the scope of all of the claims based on a “critical
`element” described in the specification); Izumi Prods. Co. v. Koninklijke
`Philips Elecs. N.V., 140 F. App’x 236, 243–44 (Fed. Cir. 2005) (non-
`precedential) (limiting the scope of the claims based on the specification
`“defining a critical aspect of the invention itself”).
`Based on the ’079 patent’s discussion of the “critical aspect” of “the
`present invention,” we are persuaded by Patent Owner’s argument and
`further limit the “key string” in the server limitation (claim 1) and the
`determining step (claim 11) to one that does not reveal a common identifier
`of the secured resource to the service client. Notably, the ’079 patent
`describes this need to prevent the discovery of a common identifier of the
`secured resource as the only “critical aspect” of “the present invention.”
`According, we conclude that the patentee has disavowed or disclaimed claim
`scope based on clear and unmistakable statements describing the critical
`aspect of the present invention.
`We are not persuaded by Petitioner’s argument that because Patent
`Owner does not argue that Johnson does not teach the “key string”
`limitation, we do not need to address the proper construction of “key string.”
`See Reply 4. First, the burden of persuasion to prove unpatentability is
`always on Petitioner and never shifts to Patent Owner. In re Magnum Oil
`Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016); see also 35 U.S.C.
`§ 316(e). Similarly, the burden of production never switches from Petitioner
`
`16
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`IPR2017-00296
`Patent 8,505,079 B2
`
`to Patent Owner with regard to the Graham factors, such as the differences
`between the scope of the claim and the prior art:
`Where, as here, the only question presented is whether due
`consideration of the four Graham factors renders a claim or
`claims obvious, no burden shifts from the patent challenger to
`the patentee. This is especially true where the only issues to be
`considered are what the prior art discloses, whether there would
`have been a motivation to combine the prior art, and whether that
`combination would render the patented claims obvious.
`Magnum, 829 F.3d at 1376. Accordingly, whether or not Patent Owner
`argues a prior art reference does not teach a limitation, Petitioner retains the
`burden to prove that the prior art teaches or suggests all of the limitations
`recited in the claim. Moreover, in determining whether Petitioner has met
`that burden, it is proper for us to interpret the challenged claims based on the
`full record developed during trial, not based on how any terms were
`interpreted preliminarily in the Decision on Institution. See Trivascular, 812
`F.3d at 1068 (holding that “the Board is considering the matter preliminarily
`without the benefit of a full record” at the institution stage, and “[t]he Board
`is free to change its view of the merits after further development of the
`record, and should do so if convinced its initial inclinations were wrong”).
`Second, contrary to Petitioner’s argument, Patent Owner asserts that
`Johnson does not teach a “key string” under Patent Owner’s proposed
`definition. For example, Patent Owner asserts that “Johnson does not show
`a single-payment transaction system like the ‘079 system which allows the
`buyer to authorize the merchant’s access to the buyer’s credit card account
`to pay for a given transaction without having to give any credit card details
`to the merchant.” PO Resp. 36. Similarly, in summarizing its arguments,
`Patent Owner states Johnson does not teach or suggest, inter alia,
`
`17
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`IPR2017-00296
`Patent 8,505,079 B2
`
`“determining a key string known to both said secured resource and the
`authorized user said requestor purports to be, said key string being adapted
`to provide a basis for authenticating the identity of said requester.” Id. at 43
`(emphasis omitted). The fact that Patent Owner does not include any further
`argument regarding that contention in the Patent Owner Response is
`immaterial, as we must determine whether Petitioner has met its burden to
`prove unpatentability by a preponderance of the evidence.
`Petitioner further argues that Patent Owner’s proposed construction
`“assumes that the claims require the ‘key string’ to be the same as the
`‘authentication credential.’” Reply 3. According to Petitioner, although
`“the ’079 Patent specification discloses an embodiment where the
`‘authentication credential’ can comprise a ‘key string,’ the claims are not so
`limited.” Id.; see also Ex. 1017, 57:10–20, 61:3–11 (Mr. Oglesby opining
`that claim 1 is silent as to whether to not the key string and authentication
`credential are the same). We agree with Petitioner that the specific “key
`string” recited in the claim is not the same thing as the claimed
`“authentication credential.” The claims recite both a “key string” and an
`“authentication credential” and no limitation recited in the claims requires
`that they must be—or even can be—the same thing. Because two different
`words are used, we are not persuaded that the limitations are synonymous.
`See Ethicon Endo–Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1579
`(Fed. Cir. 1996) (“If the terms ‘pusher assembly’ and ‘pusher bar’ described
`a single element, one would expect the claim to consistently refer to this
`element as either a ‘pusher bar’ or a ‘pusher assembly,’ but not both,
`especially not within the same clause. Therefore, in our view, the plain
`
`18
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`IPR2017-00296
`Patent 8,505,079 B2
`
`meaning of the claim will not bear a reading that ‘pusher assembly’ and
`‘pusher bar’ are synonyms.”).
`However, our construction maintains a difference between the “key
`string” and the “authentication credential.” As properly construed, the key
`string is used by the requester to request that a service client be able to have
`access to a secured resource. On the other hand, the authentication
`credential is used by the service client to access that secured resource. That
`is, although we have construed the “key string” such that it precludes
`systems and methods in which the key string, with its identifying
`information, is provided to the unauthorized service client, the
`“authentication credential” is given to the unauthorized service client to use
`for authentication. Id. at 17:37–43, 51–57. Because the “key string” cannot
`be known to the “unauthorized service client” and the “authentication
`credential” must be given to the “unauthorized service client,” consistent
`with Petitioner’s argument and Mr. Oglesby’s testimony, the construction
`draws a distinction between the “key string” and the “authentication
`credential.”9
`As explained above, a “string” in the context of the ’079 patent is “an
`ordered sequence of any subset of symbols selected from a set of symbols
`wherein each symbol forming the set may be represented in both a format
`that may be perceived by an end user and a format that may be recognized
`
`
`9 For clarity we note that although the authentication credential is not the key
`string recited in the server limitation (claim 1) or the determining step (claim
`11), that is not to say that the authentication credential cannot have the
`attributes of a key string, except for the disclaimer. For example, the
`authentication credential may meet the definition of a “string” set forth in
`column 15 of the ’079 patent.
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`IPR2017-00296
`Patent 8,505,079 B2
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`by software or hardware.” Ex. 1001, 15:29–36. Additionally, independent
`clai
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