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` Paper 9
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` Entered: December 8, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CPI CARD GROUP INC.,
`Petitioner,
`
`v.
`
`GEMALTO S.A.,
`Patent Owner.
`_______________
`
`Case IPR2017-01320
`Patent 6,786,418 B1
`____________
`
`Before TREVOR M. JEFFERSON, PATRICK M. BOUCHER, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
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`
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`IPR2017-01320
`Patent 6,786,418 B1
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`I.
`
`INTRODUCTION
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`A. Background
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`CPI Card Group Inc. (“Petitioner” or “CPI”) filed a Petition (Paper 2,
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`“Pet.”) requesting an inter partes review of claims 1–4 and 7–17 of U.S.
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`Patent No. 6,786,418 B1 (Ex. 1001, “the ’418 patent”) pursuant to 35 U.S.C.
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`§§ 311–319. Patent Owner filed an Amended Patent Owner Preliminary
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`Response (Paper 8, “PO Prelim. Resp.”). CPI relies on the Declaration of
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`Dr. Nathaniel Polish (Ex. 1003) in support of its Petition. Concurrent with
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`its Petition, Petitioner filed a motion to seal portions of Exhibit 1006 and the
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`entirety of Exhibit 1013. Paper 3, 1.
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`We have jurisdiction under 37 C.F.R. § 42.4(a) and 35 U.S.C. § 314,
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`which provides that an inter partes review may not be instituted unless the
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`information presented in the Petition “shows that there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” After considering the Petition,
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`Preliminary Response, and associated evidence, we conclude that Petitioner
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`has demonstrated a reasonable likelihood that it would prevail in showing
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`the unpatentability of claims 1–4 and 7–17 of the ’418 patent.
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`B. Related Proceeding
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`The parties indicate that the ’418 patent and/or related patents are
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`involved in Gemalto S.A. v. CPI Card Group Inc., No. 1:16-cv-01006-RBJ
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`(D. Colo.).
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`C. The ʼ418 Patent (Ex. 1001)
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`The ’418 patent is directed to “[a] system for customizing smart
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`cards” (microcircuit cards) by “using an architecture for communications
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`between the customizing appliances . . . and the peripheral devices” where
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`IPR2017-01320
`Patent 6,786,418 B1
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`the customizing appliances receive customizing data from data servers via
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`computer links. Ex. 1001, Abstract, 1:53–65. As an improvement over
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`prior art systems where each customizing station acts on a data server in a
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`predetermined fashion, the ’418 patent discloses:
`
`the
`interface management means, disposed between
`an
`customizing machines and the servers, which is informed about
`and takes account of the availability of a server for responding as
`quickly as possible to the request from a customizing station.
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`Id. at 2:12–16. Figure 1, depicted below, shows a functional diagram of a
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`smart card customizing system of the invention. Id. at 3:30–31.
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`Figure 1, above, shows a “management interface [that] comprises: a
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`computer [PC] equipped with a multiway card [CM],” and that “each data
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`server [DEP1-DEP6] and each customizing station [PPP1–PPP6] is
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`respectively connected to the computer by a serial link [LS1-LS6, LD1-
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`3
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`IPR2017-01320
`Patent 6,786,418 B1
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`LD6] on the multiway card.” Id. at 2:48–52. The “data server/management
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`interface is based on a real-time PC system which is ‘cascadable,’ which
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`means that several management interfaces can be connected together in a
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`cascade by a local network.” Id. at 3:13–16. “The management interface
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`coordinates the execution at the same time or periodically and for each
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`customizing station” of the requests, availability, transmitting and receiving
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`between the data server and the customizing station. Id. at 2:38–48.
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`D. Illustrative Claim
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`Petitioner challenges claims 1–4 and 7–17 of the ’418 patent, with
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`independent claims 1 and 13. Claims 1 and 2 are reproduced below:
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`1. A smart card customizing system comprising:
`
`at least one customizing machine equipped with at least
`one customizing station that sends customizing data requests;
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`at least one customizing data server that delivers
`customizing data and;
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`at least one management interface connected to said
`customizing machine and to said data sever by a bi-directional
`link, said management interface receiving said requests and
`transmitting them to at least one of said servers as soon as they
`are received and as soon as said server is available, and receiving
`the corresponding response and transmitting said response to the
`requesting customizing station.
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`The smart card customizing system of claim 1, wherein
`2.
`said management interface coordinates the execution of at least
`the following types of tasks at the same time for each
`customizing station:
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`monitoring the occurrence of a request,
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`monitoring the availability of each server,
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`transmitting the request to a server as soon as it is
`available,
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`4
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`IPR2017-01320
`Patent 6,786,418 B1
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`receiving the data responding to the request, and
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`the
`to
`response data
`the
`transmitting
`customizing station as soon as they are received.
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`requesting
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`Ex. 1001, 5:2–28.
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`E. The Alleged Grounds of Unpatentability
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`The information presented in the Petition sets forth the grounds of
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`unpatentability of claims 1–4 and 7–17 of the ’418 patent as follows (see
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`Pet. 4–5):
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`References
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`Basis
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`Claim[s] Challenged
`
`Goman1
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`Goman and AAPA2
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`Mackenthun3
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`§ 103(a)
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`§ 103(a)
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`§ 103(a)
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`1, 2, 7–13, and 15–17
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`4
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`1, 3, 13, and 14
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`II. ANALYSIS
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`A. Level of Skill in the Art
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`Petitioner argues that a person of ordinary skill in the art
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`relevant to the ’418 Patent had at least a bachelor’s degree in
`computer science, electrical or computer engineering, or a related
`field of study, and two or more years of industry experience
`relating to smart card manufacturing. Additional graduate
`education could substitute for professional experience, or
`significant experience in the field could substitute for formal
`education.
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`Pet. 15 (citing Ex. 1003 ¶ 28). Patent Owner argues that “Petitioner failed to
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`provide detailed support for the level of ordinary skill in the art,” such that
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`the Petition should be denied. PO Prelim. Resp. 12–13.
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`1 U.S. Pat. No. 6,196,459 B1 issued Mar. 6, 2001 (Ex.1004, “Goman”).
`2 Applicant Admitted Prior Art, Ex. 1001, 1:10–30 (“AAPA”).
`3 U.S. Pat. No. 5,969,318, issued Oct. 19, 1999 (Ex. 1005, “Mackenthun”).
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`On the record before us, Patent Owner fails to identify how or why
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`Petitioner’s proposed level of ordinary skill is deficient. Id. We find that
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`the level of ordinary skill in the art is reflected by the prior art of record. See
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`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC
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`Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91
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`(CCPA 1978). We also adopt Petitioner’s description of a person of
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`ordinary skill in the art for purposes of this decision.
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`B. Claim Interpretation
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`We interpret claims of an unexpired patent using the broadest
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`reasonable construction in light of the specification of the patent in which
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`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee,
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`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
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`reasonable interpretation standard). In applying a broadest reasonable
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`construction, claim terms generally are given their ordinary and customary
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`meaning, as would be understood by one of ordinary skill in the art in the
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`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
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`1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must
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`be set forth in the specification with reasonable clarity, deliberateness, and
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`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Only those
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`terms that are in controversy, however, need to be construed, and only to the
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`extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. &
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`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
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`With respect to the terms of the challenged claims, Petitioner argues
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`for claim constructions of: (1) “customizing station” (independent claims 1
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`and 13 and dependent claims 2–4, 8, 9, 11, 16, and 17); (2) “monitoring the
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`occurrence of a request” and “monitoring the availability of each server”
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`Patent 6,786,418 B1
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`(claim 2); (3) “management interface” (claims 1–3 and 9–14); (4) “data
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`server” (claims 1–3, 7, and 12); and (5) “as soon as they are received” and
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`“as soon as said server [it] is available” (claims 1 and 2). Pet. 5–12.
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`Patent Owner believes these terms do not need to be construed, but
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`offers alternative constructions in response to Petitioner’s constructions. PO
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`Prelim. Resp. 20–27.
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`On the present record, we find that no express construction is needed
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`for each of the claim terms except for the term, management interface,
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`addressed below.
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`1. “management interface” (claims 1–3 and 9–14)
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`Petitioner argues that the ’418 patent specification describes
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`“management interface,” stating that “[t]his management interface
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`comprises: a computer equipped with a multiway card,” (Ex. 1001, 2:48–
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`50), with “each data server and each customizing station being respectively
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`connected to the computer by a serial link on the multiway card” (id. at
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`2:48–52). Pet. 9. Read consistent with the claims, Petitioner argues that
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`“management interface” should be construed as “a communication interface
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`between two devices.” Pet. 9 (citing Ex. 1003 ¶¶ 78–81).
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`Patent Owner contends that Petitioner, after offering multiple
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`constructions of “management interface” in related proceedings, now offers
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`a construction “so broad as to become almost meaningless.” PO Prelim.
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`Resp. 24–25. Instead, consistent with the claim language and specification,
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`Patent Owner contends that management interface should be construed to
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`mean “a combination of hardware and software that is capable of at least
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`managing and optimizing communications between a customizing station
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`and a customizing data server or device.” Id. at 25.
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`Patent 6,786,418 B1
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`On the record at this stage, we agree with Petitioner that “a
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`communication interface between two devices” is consistent with
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`“management interface” as recited in the ’418 patent specification and
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`claims. Patent Owner’s proposed construction is too narrow and not
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`supported by the patent specification.
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`C. Legal Standard
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` A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
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`differences between the claimed subject matter and the prior art are such that
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`the subject matter, as a whole, would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007). The question of obviousness is resolved on the basis of underlying
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`factual determinations including: (1) the scope and content of the prior art;
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`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of ordinary skill in the art; and (4) objective evidence of
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`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`In that regard, an obviousness analysis “need not seek out precise
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`teachings directed to the specific subject matter of the challenged claim, for
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`a court can take account of the inferences and creative steps that a person of
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`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see also
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`Translogic, 504 F.3d at 1259, 1262 (quoting KSR, 550 U.S. at 418).
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`D. Obviousness based on Goman
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`Petitioner contends that Goman teaches the limitations of claims 1, 2,
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`7–13, and 15–17, citing the Declaration of Dr. Nathaniel Polish (Ex. 1003)
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`in support of its Petition. Pet. 17–43. For reasons discussed below, based
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`on the current record, we determine Petitioner has demonstrated a reasonable
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`Patent 6,786,418 B1
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`likelihood that it would prevail with respect to at least one challenged claim
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`of the ’418 patent.
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`1. Goman (Ex. 1004)
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`Goman discloses “[a] smart card personalization system [that]
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`provides an interface to smart card personalization stations and to external
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`computing or data resources which normally are not available directly to
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`personalization station.” Ex. 1004, Abstract. Goman states that smart card
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`personalization stations may require access to external resources
`which provide security services or access to card data. The
`external resources, particularly the security services, are
`expensive infrastructures to repeat for each personalization
`station. Also, communication between the personalization
`station and the external resource is limited by the speed of the
`communication link between them.
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`Id. at 2:1–7.
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`Figure 1, below, shows an embodiment of a smart card issuing
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`process with a smart card personalization server. Id. at 2:65–67.
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`Patent 6,786,418 B1
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`Figure 1 shows:
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`components of a smart card issuing process that incorporates one
`embodiment of the smart card personalization server of the
`present invention. The smart card personalization server 100
`receives card objects from a card issuer management system 150.
`A smart card personalization controller 120 receives, from the
`card issuer management system 150, a card object identifier for
`each one of the card objects passed to the smart card
`personalization server 100. The smart card personalization
`controller 120 routes each one of the card object identifiers to
`one of a plurality of personalization stations 130. Each
`personalization station 130 uses the card object identifier to
`request data and services from the smart card personalization
`server 100 in order to personalize a smart card 160.
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`Id. at 3:51–67. Card issuer management system 150 manages the cardholder
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`data and determines the type of card issued. Id.
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`Figure 2, below, provides a functional block diagram of the smart card
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`personalization server of Figure 1. Id. at 3:1–3.
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`
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`Figure 2 depicts “a block diagram of one embodiment of the smart
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`card personalization system illustrating the logical input and output
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`connections for the smart card personalization server 100.” Id. at 4:35–38.
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`Figure 2 shows cardholder data 202 and card issuer management system
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`150, which assembles the data necessary for each card personalization job.
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`Id. at 4:38–44. “The smart card personalization server 100 provides an
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`interface to external security services 204 and additional data sources 206 as
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`needed to perform a smart card personalization job.” Id. at 5:16–19. “The
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`communication protocols between the software program for the smart card
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`personalization server 100 and the external security services 204 and the
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`Patent 6,786,418 B1
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`data sources 206 vary depending upon the underlying data management
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`system or security system employed.” Id. at 5:22–27.
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`2. Analysis
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`Petitioner provides evidence that Goman teaches the limitations of
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`claim 1, specifically a smart card personalization system with at least one
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`customizing machine and station and customizing data server. Pet. 22–28
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`(citing Ex. 1003 ¶¶ 118–131). Petitioner provides citations to Goman and
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`declarant testimony to support the contention that Goman teaches the
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`customization limitations of claim 1.
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`Petitioner also provides evidence that Goman teaches the “at least one
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`management interface connected to said customizing machine” limitation of
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`claim 1. Pet. 28–29. Petitioner asserts that server 100 in Goman receives
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`requests from personalization station 130 via software and server 100
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`retrieves the requested data and sends it back to station 130. Pet. 29–30
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`(citing Ex. 1004, 7:20–23, 7:27–34). Petitioner provides argument and
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`evidence that Goman’s description of coupling the server 100 to the data
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`sources 204, 206 via standard data query commands to access the stored data
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`and the use of communication protocols of the underlying data management
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`system teach the source connection, transmission, and receipt limitations of
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`claim 1. Pet. 35 (citing Ex. 1003 ¶¶ 155–157). Indeed, Petitioner argues
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`that “Goman expressly teaches that server 100 sends the requested data back
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`to the personalization station 130 after it has been retrieved from the data
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`sources 204, 206” as “the server software 305 retrieves and sends the data
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`and commands unique to the card being personalized to the personalization
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`station interface software 304 [in personalization station 130] at stage 408.”
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`12
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`Pet. 36 (quoting Ex. 1004, 7:27–30) (emphasis omitted) (citing Ex. 1003
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`¶ 158).
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`
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`Petitioner provides citations and argument for independent claim 13
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`and dependent claims 2, 7, 8, 10–12, and 15–17. Pet. 36–51. Petitioner
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`provides sufficient citation and evidence to demonstrate a likelihood of
`
`showing that Goman teaches the limitations of these challenged claims.
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`Patent Owner argues that Petitioner fails to show that Goman teaches
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`a “management interface” as recited in claims 1, 2, 7–13, and 15–17.
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`Specifically, Patent Owner contends that Petitioner’s construction of
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`management interface is too broad. PO Prelim. Resp. 32–33. As discussed
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`above, we do not adopt Patent Owner’s narrow construction, as it does not
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`reflect the scope of the ’418 patent specification. We disagree with Patent
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`Owner’s contentions. On the present record, Petitioner presents sufficient
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`evidence that server 100 in Goman transmits and receives between
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`personalization stations and data servers as the interface. Indeed, Goman
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`expressly describes smart card personalization server 100 as a
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`communication interface between the personalization stations and data
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`sources 204, 206. Ex. 1004, 5:16–27 (stating that “[t]he smart card
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`personalization server 100 provides an interface to external security services
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`204 and additional data sources 206 as needed to perform a smart card
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`personalization job.”); id. at 3:32–37; see Pet. 28–29; Ex. 1003 ¶ 132.
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`We are also not persuaded by Patent Owner’s argument that CPI’s
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`position in district court regarding Goman’s teachings differs from the
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`arguments presented its Petition and represent an admission regarding the
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`teachings of Goman. PO Prelim. Resp. 33–34. With respect to this
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`difference, Petitioner argues that “rather than making an admission
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`regarding Goman, Petitioner’s response in the related litigation “simply
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`respond[ed] to PO’s fallacious claim interpretation as applied to Petitioner’s
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`accused system.” Pet. 32.
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`On the present record, Patent Owner’s citations to Petitioner’s
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`arguments in the related district court action do not establish that Goman
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`does not have a management interface.
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`Based on the foregoing, Petitioner has provided sufficient evidence
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`and argument showing that there is a reasonable likelihood that it would
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`prevail in demonstrating the unpatentability of claims 1, 2, 7–13, and 15–17
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`of the ’4181 patent as obvious over Goman.
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`3. Claim 4: Goman and AAPA
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`Claim 4 depends from claim 1 and recites “wherein each customizing
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`station comprises: a microprocessor [and] a reader/encoder.” With respect
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`to dependent claim 4, Petitioner relies on the processor in personalization
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`station 130 of Goman in combination with the AAPA, which admits that
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`conventional customization are performed on stations using
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`microprocessors. Pet. 52; Ex. 1001, 1:23–27. In addition, claim 4 recites “a
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`reader/encoder” that is also an admitted part of prior art customization
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`stations. Pet. 53; Ex. 1001, 1:10–30. Patent Owner contends that a person
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`of ordinary skill in the art would know that the conventional customization
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`station as described in AAPA with the conventional computer links and
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`system disclosed in Goman teaches the limitations of dependent claim 4.
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`Pet. 52–54 (citing Ex. 1003 ¶¶ 249–261).
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`Patent Owner contends that Petitioner has not shown how Goman
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`would be combined with the AAPA to read on the limitations of claim 4.
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`PO Prelim. Resp. 35. Indeed, Patent Owner avers that the AAPA and
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`Goman teach away because conventional systems disclosed in the AAPA
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`use dedicated peripheral encrypting devices which were connected to each
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`customizing station. In Goman, Patent Owner argues, the personalization
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`station is not connected to security services but instead connected to smart
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`card personalization server 100. Id. at 35–36.
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`Patent Owner’s evidence does not show that AAPA and Goman
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`“teach opposite of each other” such that a person of ordinary skill in the art
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`would not have been motivated to combine them. Id. at 36. We do not
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`agree that conventional systems disclosed in the AAPA and Goman rise to
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`the level of teaching away from their combination. See, e.g., In re Fulton,
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`391 F.3d 1195, 1201 (Fed. Cir. 2004). Based on the record before us,
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`Petitioner has provided sufficient reasoned analysis and evidence to support
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`the combination of Goman with the conventional system disclosed in AAPA
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`to yield the limitations of claim 4. Pet. 52–54.
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`Based on the foregoing, Petitioner has provided sufficient evidence
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`and argument showing that there is a reasonable likelihood that it would
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`prevail in demonstrating the unpatentability of claim 4 over Goman and
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`AAPA.
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`E. Obviousness based on Mackenthun
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`Petitioner contends that Mackenthun discloses the limitations of
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`claims 1, 3, 13, and 14. Pet. 54–74.
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`1. Mackenthun (Ex. 1005)
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`Mackenthun discloses “an apparatus and method for connecting a card
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`requester with multiple card service providers” to issue multiple services
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`selected on a computer screen onto one card. Ex. 1005, Abstract. Figure 1,
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`below shows an overview of the card system. Id. at 3:45.
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`Figure 1 depicts an overview of Mackenthun’s system, showing the
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`different links of the gateway apparatus 30. “The computer of the card
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`requester 10 can be any remote computer that is being used by a card
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`requester to connect to the gateway apparatus 30.” Id. at 4:30–33. “A
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`communication link 20L between the computer of the card requester 10 and
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`the gateway apparatus 30 can take place by direct data line, a modem,
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`wireless or via Internet.” Id. at 4:35–38. Items 40A through 40I are card
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`service providers connected via communication links 20A through 20I with
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`gateway apparatus 30. Mackenthun discloses that
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`gateway apparatus 30 has the ability to connect multiple card
`requesters from multiple computers of card requesters 10. It
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`handles the request from the card requester for a card, collects all
`information needed to manufacture and personalize a card from
`the card service provider, checks and combines the data and
`generates one output file. Such file can be transmitted via
`communication link 20J to a card manufacturing apparatus 23.
`Alternatively, the card requester may choose to have the card
`issued from a self service
`terminal 22 connected via
`communication link 20K, whereby this self service terminal
`comprises of a card manufacturing apparatus.
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`Id. at 4:42–53.
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`2. Analysis
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`Petitioner provides citation to Mackenthun and its declarant,
`
`Dr. Polish, to support the contentions that Mackenthun teaches the
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`limitations of claims 1, 3, 13, and 14. Pet. 57–63 (citing Ex. 1003 ¶¶ 250–
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`337). Petitioner provides argument and evidence that Mackenthun teaches
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`the smart card customizing system of claim 1, where the card requester’s
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`computer 10 and the self-service terminal 22 or card manufacturing
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`apparatus 23 of Mackenthun operate as customizing stations (Pet 58–59).
`
`Petitioner also provides evidence that Mackenthun teaches the customizing
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`data servers [elements 40A-40I] and the management interface in gateway
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`apparatus 30. Pet. 59–61. Petitioner avers that the links disclosed in
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`Mackenthun and the card system teach each element of claim 1. Pet. 65–66.
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`Petitioner provides similar analysis for independent claim 13, which is
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`closely related to independent claim 1. Pet. 69–73.
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`With respect to independent claim 13 and dependent claims 3 and 14,
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`Petitioner provides argument and evidence that Mackenthun teaches the
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`limitations of these challenged claims. In particular, Petitioner provides
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`evidence that Mackenthun provides multiple ports for communication that
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`teach the management interface equipped with a multi-port card as required
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`in claim 3. Pet. 66–67. Petitioner provides evidence and declarant
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`testimony that the communication links in Mackenthun teach the serial link
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`required in the challenged claims. Pet. 67. Finally, Petitioner provides
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`evidence and testimony that the multiple card requesters disclosure in
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`Mackenthun teaches the multitask realtime operating system limitation of
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`claim 3. Pet. 68–69 (citing Ex. 1003 ¶¶ 308–310). Petitioner provides
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`similar contentions for claim 14, which is closely related to claim 3. Pet.
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`73–74.
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`Patent Owner contends that Petitioner’s contentions are redundant to
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`the grounds argued based on Goman and that Mackenthun teaches a
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`completely separate system for the creation of smart cards that differs from
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`the customizing data machine of the ’418 patent. PO Prelim. Resp. 37–40.
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`We do not agree that Petitioner’s grounds are redundant as the
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`grounds based on Mackenthun address claim 3 and 14, which are not
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`addressed in the grounds based on Goman. We are also not persuaded by
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`Patent Owner’s contentions that Mackenthun teaching separate devices for
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`requesting customizing data and manufacturing the cards distinguishes the
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`teachings of Mackenthun from the challenged claims. Id. at 40. Patent
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`Owner’s arguments are not commensurate with the scope of the claims.
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`Patent Owner does not identify any missing claim limitation in claims 1, 3,
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`13, or 14. Patent Owner’s arguments also fail to identify any limitation in
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`the challenged claims that require the creation of the customized card or
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`mass production of smart cards as Patent Owner contends. PO Prelim. Resp.
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`38–39. Nor are we persuaded that Mackenthun’s teachings of separate
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`devices for manufacturing and requesting customization of smart cards
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`makes it completely different from the ’418 patent. Id. at 40.
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`Based on our review of the record before us, Petitioner has provided
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`sufficient evidence and argument showing that there is a reasonable
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`likelihood that it would prevail in demonstrating the unpatentability of
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`claims 1, 3, 13, and 14 of the ’418 patent as obvious over Mackenthun.
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`F. Petitioner’s Motion to Seal
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`Concurrent with its Petition, Petitioner filed a motion to seal portions
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`of Exhibit 1006 and the entirety of Exhibit 1013. Paper 3, 1. Petitioner
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`notes that it did not rely on confidential or protected information in its
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`Petition. Id. at 2. Accordingly, Petitioner notes “that [counsel] will contact
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`[Patent Owner’s counsel] to confer regarding the preparation and filing of
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`redacted, non-confidential copies of Exhibits 1006 and 1013 obviating the
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`need for this motion and the sealing of Exhibits 1006 and 1013. Id.
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`Petitioner’s motion to seal is granted. Petitioner is instructed to meet
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`and confer with Patent Owner and submit redacted, non-confidential
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`versions of Exhibit 1006 and 1013 that maintain any citations or references
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`contained in the Petition. Petitioner is further instructed to meet and confer
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`with Patent Owner and submit a request to expunge the unredacted and
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`confidential Exhibits 1006 and 1013, indicating in the request whether any
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`party opposes such action.
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`III. CONCLUSION
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`For the foregoing reasons, we determine that Petitioner has shown a
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`reasonable likelihood of prevailing in demonstrating that claims 1–4 and 7–
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`17 of the ’418 patent are unpatentable.
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`IV. ORDER
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`Accordingly, it is:
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`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
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`hereby instituted as to claims 1–4 and 7–17 of the ’451 patent on the
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`following grounds:
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`Claims 1, 2, 7–13, and 15–17 of the ’418 patent as obvious under 35
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`U.S.C. § 103(a) over Goman;
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`Claim 4 of the ’418 patent as obvious under 35 U.S.C. § 103(a) over
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`Goman and AAPA; and
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`Claims 1, 3, 13, and 14 of the ’418 patent under 35 U.S.C. § 103(a)
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`over the combination of Mackenthun;
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
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`partes review of the ’451 patent is hereby instituted commencing on the date
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`of entry of this Order, and, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
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`§ 42.4, notice is hereby given of the institution of trial;
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`FURTHER ORDERED that no ground other than that specifically
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`provided is authorized; and
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`FURTHER ORDERED that Petitioner’s Motion to Seal Exhibit 1006
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`and Exhibit 1013 is granted. Petitioner shall prepare and submit redacted
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`and non-confidential versions of Exhibit 1006 and Exhibit 1013 and request
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`that the sealed exhibits be expunged.
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`PETITIONER:
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`Michael Scheer
`mscheer@michaeljscheer.com
`
`Pejman Sharifi
`psharifi@winston.com
`
`Louis Campbell
`llcampbell@winston.com
`
`PATENT OWNER:
`
`Peter Schechter
`schechter@oshaliang.com
`
`Tammy Dunn
`dunn@oshaliang.com
`
`
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