throbber
Trials@uspto.gov
`571-272-7822
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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
`
`
`
`
`
`

`

`IPR2017-01320
`Patent 6,786,418 B1
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`CPI Card Group Inc. (“Petitioner” or “CPI”) filed a Petition (Paper 2,
`
`“Pet.”) requesting an inter partes review of claims 1–4 and 7–17 of U.S.
`
`Patent No. 6,786,418 B1 (Ex. 1001, “the ’418 patent”) pursuant to 35 U.S.C.
`
`§§ 311–319. Patent Owner filed an Amended Patent Owner Preliminary
`
`Response (Paper 8, “PO Prelim. Resp.”). CPI relies on the Declaration of
`
`Dr. Nathaniel Polish (Ex. 1003) in support of its Petition. Concurrent with
`
`its Petition, Petitioner filed a motion to seal portions of Exhibit 1006 and the
`
`entirety of Exhibit 1013. Paper 3, 1.
`
`We have jurisdiction under 37 C.F.R. § 42.4(a) and 35 U.S.C. § 314,
`
`which provides that an inter partes review may not be instituted unless the
`
`information presented in the Petition “shows that there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” After considering the Petition,
`
`Preliminary Response, and associated evidence, we conclude that Petitioner
`
`has demonstrated a reasonable likelihood that it would prevail in showing
`
`the unpatentability of claims 1–4 and 7–17 of the ’418 patent.
`
`B. Related Proceeding
`
`The parties indicate that the ’418 patent and/or related patents are
`
`involved in Gemalto S.A. v. CPI Card Group Inc., No. 1:16-cv-01006-RBJ
`
`(D. Colo.).
`
`C. The ʼ418 Patent (Ex. 1001)
`
`The ’418 patent is directed to “[a] system for customizing smart
`
`cards” (microcircuit cards) by “using an architecture for communications
`
`between the customizing appliances . . . and the peripheral devices” where
`
`2
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`IPR2017-01320
`Patent 6,786,418 B1
`
`the customizing appliances receive customizing data from data servers via
`
`computer links. Ex. 1001, Abstract, 1:53–65. As an improvement over
`
`prior art systems where each customizing station acts on a data server in a
`
`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.
`
`Id. at 2:12–16. Figure 1, depicted below, shows a functional diagram of a
`
`smart card customizing system of the invention. Id. at 3:30–31.
`
`Figure 1, above, shows a “management interface [that] comprises: a
`
`computer [PC] equipped with a multiway card [CM],” and that “each data
`
`server [DEP1-DEP6] and each customizing station [PPP1–PPP6] is
`
`respectively connected to the computer by a serial link [LS1-LS6, LD1-
`
`
`
`3
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`

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`IPR2017-01320
`Patent 6,786,418 B1
`
`LD6] on the multiway card.” Id. at 2:48–52. The “data server/management
`
`interface is based on a real-time PC system which is ‘cascadable,’ which
`
`means that several management interfaces can be connected together in a
`
`cascade by a local network.” Id. at 3:13–16. “The management interface
`
`coordinates the execution at the same time or periodically and for each
`
`customizing station” of the requests, availability, transmitting and receiving
`
`between the data server and the customizing station. Id. at 2:38–48.
`
`D. Illustrative Claim
`
`Petitioner challenges claims 1–4 and 7–17 of the ’418 patent, with
`
`independent claims 1 and 13. Claims 1 and 2 are reproduced below:
`
`1. A smart card customizing system comprising:
`
`at least one customizing machine equipped with at least
`one customizing station that sends customizing data requests;
`
`at least one customizing data server that delivers
`customizing data and;
`
`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.
`
`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:
`
`monitoring the occurrence of a request,
`
`monitoring the availability of each server,
`
`transmitting the request to a server as soon as it is
`available,
`
`4
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`IPR2017-01320
`Patent 6,786,418 B1
`
`receiving the data responding to the request, and
`
`the
`to
`response data
`the
`transmitting
`customizing station as soon as they are received.
`
`requesting
`
`Ex. 1001, 5:2–28.
`
`E. The Alleged Grounds of Unpatentability
`
`The information presented in the Petition sets forth the grounds of
`
`unpatentability of claims 1–4 and 7–17 of the ’418 patent as follows (see
`
`Pet. 4–5):
`
`References
`
`Basis
`
`Claim[s] Challenged
`
`Goman1
`
`Goman and AAPA2
`
`Mackenthun3
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`1, 2, 7–13, and 15–17
`
`4
`
`1, 3, 13, and 14
`
`II. ANALYSIS
`
`A. Level of Skill in the Art
`
`Petitioner argues that a person of ordinary skill in the art
`
`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.
`
`Pet. 15 (citing Ex. 1003 ¶ 28). Patent Owner argues that “Petitioner failed to
`
`provide detailed support for the level of ordinary skill in the art,” such that
`
`the Petition should be denied. PO Prelim. Resp. 12–13.
`
`
`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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`IPR2017-01320
`Patent 6,786,418 B1
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`On the record before us, Patent Owner fails to identify how or why
`
`Petitioner’s proposed level of ordinary skill is deficient. Id. We find that
`
`the level of ordinary skill in the art is reflected by the prior art of record. See
`
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC
`
`Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91
`
`(CCPA 1978). We also adopt Petitioner’s description of a person of
`
`ordinary skill in the art for purposes of this decision.
`
`B. Claim Interpretation
`
`We interpret claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`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
`
`reasonable interpretation standard). In applying a broadest reasonable
`
`construction, 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. See In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must
`
`be set forth in the specification with reasonable clarity, deliberateness, and
`
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Only those
`
`terms that are in controversy, however, need to be construed, 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).
`
`With respect to the terms of the challenged claims, Petitioner argues
`
`for claim constructions of: (1) “customizing station” (independent claims 1
`
`and 13 and dependent claims 2–4, 8, 9, 11, 16, and 17); (2) “monitoring the
`
`occurrence of a request” and “monitoring the availability of each server”
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`IPR2017-01320
`Patent 6,786,418 B1
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`(claim 2); (3) “management interface” (claims 1–3 and 9–14); (4) “data
`
`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.
`
`Patent Owner believes these terms do not need to be construed, but
`
`offers alternative constructions in response to Petitioner’s constructions. PO
`
`Prelim. Resp. 20–27.
`
`On the present record, we find that no express construction is needed
`
`for each of the claim terms except for the term, management interface,
`
`addressed below.
`
`1. “management interface” (claims 1–3 and 9–14)
`
`Petitioner argues that the ’418 patent specification describes
`
`“management interface,” stating that “[t]his management interface
`
`comprises: a computer equipped with a multiway card,” (Ex. 1001, 2:48–
`
`50), with “each data server and each customizing station being respectively
`
`connected to the computer by a serial link on the multiway card” (id. at
`
`2:48–52). Pet. 9. Read consistent with the claims, Petitioner argues that
`
`“management interface” should be construed as “a communication interface
`
`between two devices.” Pet. 9 (citing Ex. 1003 ¶¶ 78–81).
`
`Patent Owner contends that Petitioner, after offering multiple
`
`constructions of “management interface” in related proceedings, now offers
`
`a construction “so broad as to become almost meaningless.” PO Prelim.
`
`Resp. 24–25. Instead, consistent with the claim language and specification,
`
`Patent Owner contends that management interface should be construed to
`
`mean “a combination of hardware and software that is capable of at least
`
`managing and optimizing communications between a customizing station
`
`and a customizing data server or device.” Id. at 25.
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`7
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`Patent 6,786,418 B1
`
`On the record at this stage, we agree with Petitioner that “a
`
`communication interface between two devices” is consistent with
`
`“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
`
`supported by the patent specification.
`
`C. Legal Standard
`
` A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`In that regard, an obviousness analysis “need not seek out precise
`
`teachings directed to the specific subject matter of the challenged claim, for
`
`a court can take account of the inferences and creative steps that a person of
`
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see also
`
`Translogic, 504 F.3d at 1259, 1262 (quoting KSR, 550 U.S. at 418).
`
`D. Obviousness based on Goman
`
`Petitioner contends that Goman teaches the limitations of claims 1, 2,
`
`7–13, and 15–17, citing the Declaration of Dr. Nathaniel Polish (Ex. 1003)
`
`in support of its Petition. Pet. 17–43. For reasons discussed below, based
`
`on the current record, we determine Petitioner has demonstrated a reasonable
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`IPR2017-01320
`Patent 6,786,418 B1
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`likelihood that it would prevail with respect to at least one challenged claim
`
`of the ’418 patent.
`
`1. Goman (Ex. 1004)
`
`Goman discloses “[a] smart card personalization system [that]
`
`provides an interface to smart card personalization stations and to external
`
`computing or data resources which normally are not available directly to
`
`personalization station.” Ex. 1004, Abstract. Goman states that smart card
`
`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.
`
`Id. at 2:1–7.
`
`Figure 1, below, shows an embodiment of a smart card issuing
`
`process with a smart card personalization server. Id. at 2:65–67.
`
`
`
`9
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`Patent 6,786,418 B1
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`Figure 1 shows:
`
`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.
`
`Id. at 3:51–67. Card issuer management system 150 manages the cardholder
`
`data and determines the type of card issued. Id.
`
`Figure 2, below, provides a functional block diagram of the smart card
`
`personalization server of Figure 1. Id. at 3:1–3.
`
`10
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`IPR2017-01320
`Patent 6,786,418 B1
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`
`
`Figure 2 depicts “a block diagram of one embodiment of the smart
`
`card personalization system illustrating the logical input and output
`
`connections for the smart card personalization server 100.” Id. at 4:35–38.
`
`Figure 2 shows cardholder data 202 and card issuer management system
`
`150, which assembles the data necessary for each card personalization job.
`
`Id. at 4:38–44. “The smart card personalization server 100 provides an
`
`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
`
`communication protocols between the software program for the smart card
`
`personalization server 100 and the external security services 204 and the
`
`11
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`IPR2017-01320
`Patent 6,786,418 B1
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`data sources 206 vary depending upon the underlying data management
`
`system or security system employed.” Id. at 5:22–27.
`
`2. Analysis
`
`Petitioner provides evidence that Goman teaches the limitations of
`
`claim 1, specifically a smart card personalization system with at least one
`
`customizing machine and station and customizing data server. Pet. 22–28
`
`(citing Ex. 1003 ¶¶ 118–131). Petitioner provides citations to Goman and
`
`declarant testimony to support the contention that Goman teaches the
`
`customization limitations of claim 1.
`
`Petitioner also provides evidence that Goman teaches the “at least one
`
`management interface connected to said customizing machine” limitation of
`
`claim 1. Pet. 28–29. Petitioner asserts that server 100 in Goman receives
`
`requests from personalization station 130 via software and server 100
`
`retrieves the requested data and sends it back to station 130. Pet. 29–30
`
`(citing Ex. 1004, 7:20–23, 7:27–34). Petitioner provides argument and
`
`evidence that Goman’s description of coupling the server 100 to the data
`
`sources 204, 206 via standard data query commands to access the stored data
`
`and the use of communication protocols of the underlying data management
`
`system teach the source connection, transmission, and receipt limitations of
`
`claim 1. Pet. 35 (citing Ex. 1003 ¶¶ 155–157). Indeed, Petitioner argues
`
`that “Goman expressly teaches that server 100 sends the requested data back
`
`to the personalization station 130 after it has been retrieved from the data
`
`sources 204, 206” as “the server software 305 retrieves and sends the data
`
`and commands unique to the card being personalized to the personalization
`
`station interface software 304 [in personalization station 130] at stage 408.”
`
`12
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`IPR2017-01320
`Patent 6,786,418 B1
`
`Pet. 36 (quoting Ex. 1004, 7:27–30) (emphasis omitted) (citing Ex. 1003
`
`¶ 158).
`
`
`
`Petitioner provides citations and argument for independent claim 13
`
`and dependent claims 2, 7, 8, 10–12, and 15–17. Pet. 36–51. Petitioner
`
`provides sufficient citation and evidence to demonstrate a likelihood of
`
`showing that Goman teaches the limitations of these challenged claims.
`
`Patent Owner argues that Petitioner fails to show that Goman teaches
`
`a “management interface” as recited in claims 1, 2, 7–13, and 15–17.
`
`Specifically, Patent Owner contends that Petitioner’s construction of
`
`management interface is too broad. PO Prelim. Resp. 32–33. As discussed
`
`above, we do not adopt Patent Owner’s narrow construction, as it does not
`
`reflect the scope of the ’418 patent specification. We disagree with Patent
`
`Owner’s contentions. On the present record, Petitioner presents sufficient
`
`evidence that server 100 in Goman transmits and receives between
`
`personalization stations and data servers as the interface. Indeed, Goman
`
`expressly describes smart card personalization server 100 as a
`
`communication interface between the personalization stations and data
`
`sources 204, 206. Ex. 1004, 5:16–27 (stating that “[t]he smart card
`
`personalization server 100 provides an interface to external security services
`
`204 and additional data sources 206 as needed to perform a smart card
`
`personalization job.”); id. at 3:32–37; see Pet. 28–29; Ex. 1003 ¶ 132.
`
`We are also not persuaded by Patent Owner’s argument that CPI’s
`
`position in district court regarding Goman’s teachings differs from the
`
`arguments presented its Petition and represent an admission regarding the
`
`teachings of Goman. PO Prelim. Resp. 33–34. With respect to this
`
`difference, Petitioner argues that “rather than making an admission
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`IPR2017-01320
`Patent 6,786,418 B1
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`regarding Goman, Petitioner’s response in the related litigation “simply
`
`respond[ed] to PO’s fallacious claim interpretation as applied to Petitioner’s
`
`accused system.” Pet. 32.
`
`On the present record, Patent Owner’s citations to Petitioner’s
`
`arguments in the related district court action do not establish that Goman
`
`does not have a management interface.
`
`Based on the foregoing, Petitioner has provided sufficient evidence
`
`and argument showing that there is a reasonable likelihood that it would
`
`prevail in demonstrating the unpatentability of claims 1, 2, 7–13, and 15–17
`
`of the ’4181 patent as obvious over Goman.
`
`3. Claim 4: Goman and AAPA
`
`Claim 4 depends from claim 1 and recites “wherein each customizing
`
`station comprises: a microprocessor [and] a reader/encoder.” With respect
`
`to dependent claim 4, Petitioner relies on the processor in personalization
`
`station 130 of Goman in combination with the AAPA, which admits that
`
`conventional customization are performed on stations using
`
`microprocessors. Pet. 52; Ex. 1001, 1:23–27. In addition, claim 4 recites “a
`
`reader/encoder” that is also an admitted part of prior art customization
`
`stations. Pet. 53; Ex. 1001, 1:10–30. Patent Owner contends that a person
`
`of ordinary skill in the art would know that the conventional customization
`
`station as described in AAPA with the conventional computer links and
`
`system disclosed in Goman teaches the limitations of dependent claim 4.
`
`Pet. 52–54 (citing Ex. 1003 ¶¶ 249–261).
`
`Patent Owner contends that Petitioner has not shown how Goman
`
`would be combined with the AAPA to read on the limitations of claim 4.
`
`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
`
`use dedicated peripheral encrypting devices which were connected to each
`
`customizing station. In Goman, Patent Owner argues, the personalization
`
`station is not connected to security services but instead connected to smart
`
`card personalization server 100. Id. at 35–36.
`
`Patent Owner’s evidence does not show that AAPA and Goman
`
`“teach opposite of each other” such that a person of ordinary skill in the art
`
`would not have been motivated to combine them. Id. at 36. We do not
`
`agree that conventional systems disclosed in the AAPA and Goman rise to
`
`the level of teaching away from their combination. See, e.g., In re Fulton,
`
`391 F.3d 1195, 1201 (Fed. Cir. 2004). Based on the record before us,
`
`Petitioner has provided sufficient reasoned analysis and evidence to support
`
`the combination of Goman with the conventional system disclosed in AAPA
`
`to yield the limitations of claim 4. Pet. 52–54.
`
`Based on the foregoing, Petitioner has provided sufficient evidence
`
`and argument showing that there is a reasonable likelihood that it would
`
`prevail in demonstrating the unpatentability of claim 4 over Goman and
`
`AAPA.
`
`E. Obviousness based on Mackenthun
`
`Petitioner contends that Mackenthun discloses the limitations of
`
`claims 1, 3, 13, and 14. Pet. 54–74.
`
`1. Mackenthun (Ex. 1005)
`
`Mackenthun discloses “an apparatus and method for connecting a card
`
`requester with multiple card service providers” to issue multiple services
`
`selected on a computer screen onto one card. Ex. 1005, Abstract. Figure 1,
`
`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
`
`different links of the gateway apparatus 30. “The computer of the card
`
`requester 10 can be any remote computer that is being used by a card
`
`requester to connect to the gateway apparatus 30.” Id. at 4:30–33. “A
`
`communication link 20L between the computer of the card requester 10 and
`
`the gateway apparatus 30 can take place by direct data line, a modem,
`
`wireless or via Internet.” Id. at 4:35–38. Items 40A through 40I are card
`
`service providers connected via communication links 20A through 20I with
`
`gateway apparatus 30. Mackenthun discloses that
`
`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.
`
`Id. at 4:42–53.
`
`2. Analysis
`
`Petitioner provides citation to Mackenthun and its declarant,
`
`Dr. Polish, to support the contentions that Mackenthun teaches the
`
`limitations of claims 1, 3, 13, and 14. Pet. 57–63 (citing Ex. 1003 ¶¶ 250–
`
`337). Petitioner provides argument and evidence that Mackenthun teaches
`
`the smart card customizing system of claim 1, where the card requester’s
`
`computer 10 and the self-service terminal 22 or card manufacturing
`
`apparatus 23 of Mackenthun operate as customizing stations (Pet 58–59).
`
`Petitioner also provides evidence that Mackenthun teaches the customizing
`
`data servers [elements 40A-40I] and the management interface in gateway
`
`apparatus 30. Pet. 59–61. Petitioner avers that the links disclosed in
`
`Mackenthun and the card system teach each element of claim 1. Pet. 65–66.
`
`Petitioner provides similar analysis for independent claim 13, which is
`
`closely related to independent claim 1. Pet. 69–73.
`
`With respect to independent claim 13 and dependent claims 3 and 14,
`
`Petitioner provides argument and evidence that Mackenthun teaches the
`
`limitations of these challenged claims. In particular, Petitioner provides
`
`evidence that Mackenthun provides multiple ports for communication that
`
`teach the management interface equipped with a multi-port card as required
`
`17
`
`

`

`IPR2017-01320
`Patent 6,786,418 B1
`
`in claim 3. Pet. 66–67. Petitioner provides evidence and declarant
`
`testimony that the communication links in Mackenthun teach the serial link
`
`required in the challenged claims. Pet. 67. Finally, Petitioner provides
`
`evidence and testimony that the multiple card requesters disclosure in
`
`Mackenthun teaches the multitask realtime operating system limitation of
`
`claim 3. Pet. 68–69 (citing Ex. 1003 ¶¶ 308–310). Petitioner provides
`
`similar contentions for claim 14, which is closely related to claim 3. Pet.
`
`73–74.
`
`Patent Owner contends that Petitioner’s contentions are redundant to
`
`the grounds argued based on Goman and that Mackenthun teaches a
`
`completely separate system for the creation of smart cards that differs from
`
`the customizing data machine of the ’418 patent. PO Prelim. Resp. 37–40.
`
`We do not agree that Petitioner’s grounds are redundant as the
`
`grounds based on Mackenthun address claim 3 and 14, which are not
`
`addressed in the grounds based on Goman. We are also not persuaded by
`
`Patent Owner’s contentions that Mackenthun teaching separate devices for
`
`requesting customizing data and manufacturing the cards distinguishes the
`
`teachings of Mackenthun from the challenged claims. Id. at 40. Patent
`
`Owner’s arguments are not commensurate with the scope of the claims.
`
`Patent Owner does not identify any missing claim limitation in claims 1, 3,
`
`13, or 14. Patent Owner’s arguments also fail to identify any limitation in
`
`the challenged claims that require the creation of the customized card or
`
`mass production of smart cards as Patent Owner contends. PO Prelim. Resp.
`
`38–39. Nor are we persuaded that Mackenthun’s teachings of separate
`
`devices for manufacturing and requesting customization of smart cards
`
`makes it completely different from the ’418 patent. Id. at 40.
`
`18
`
`

`

`IPR2017-01320
`Patent 6,786,418 B1
`
`Based on our review of the record before us, Petitioner has provided
`
`sufficient evidence and argument showing that there is a reasonable
`
`likelihood that it would prevail in demonstrating the unpatentability of
`
`claims 1, 3, 13, and 14 of the ’418 patent as obvious over Mackenthun.
`
`F. Petitioner’s Motion to Seal
`
`Concurrent with its Petition, Petitioner filed a motion to seal portions
`
`of Exhibit 1006 and the entirety of Exhibit 1013. Paper 3, 1. Petitioner
`
`notes that it did not rely on confidential or protected information in its
`
`Petition. Id. at 2. Accordingly, Petitioner notes “that [counsel] will contact
`
`[Patent Owner’s counsel] to confer regarding the preparation and filing of
`
`redacted, non-confidential copies of Exhibits 1006 and 1013 obviating the
`
`need for this motion and the sealing of Exhibits 1006 and 1013. Id.
`
`Petitioner’s motion to seal is granted. Petitioner is instructed to meet
`
`and confer with Patent Owner and submit redacted, non-confidential
`
`versions of Exhibit 1006 and 1013 that maintain any citations or references
`
`contained in the Petition. Petitioner is further instructed to meet and confer
`
`with Patent Owner and submit a request to expunge the unredacted and
`
`confidential Exhibits 1006 and 1013, indicating in the request whether any
`
`party opposes such action.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that Petitioner has shown a
`
`reasonable likelihood of prevailing in demonstrating that claims 1–4 and 7–
`
`17 of the ’418 patent are unpatentable.
`
`19
`
`

`

`IPR2017-01320
`Patent 6,786,418 B1
`
`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`
`hereby instituted as to claims 1–4 and 7–17 of the ’451 patent on the
`
`following grounds:
`
`Claims 1, 2, 7–13, and 15–17 of the ’418 patent as obvious under 35
`
`U.S.C. § 103(a) over Goman;
`
`Claim 4 of the ’418 patent as obvious under 35 U.S.C. § 103(a) over
`
`Goman and AAPA; and
`
`Claims 1, 3, 13, and 14 of the ’418 patent under 35 U.S.C. § 103(a)
`
`over the combination of Mackenthun;
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`
`partes review of the ’451 patent is hereby instituted commencing on the date
`
`of entry of this Order, and, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`
`§ 42.4, notice is hereby given of the institution of trial;
`
`FURTHER ORDERED that no ground other than that specifically
`
`provided is authorized; and
`
`FURTHER ORDERED that Petitioner’s Motion to Seal Exhibit 1006
`
`and Exhibit 1013 is granted. Petitioner shall prepare and submit redacted
`
`and non-confidential versions of Exhibit 1006 and Exhibit 1013 and request
`
`that the sealed exhibits be expunged.
`
`
`
`
`
`
`
`
`
`
`
`20
`
`

`

`IPR2017-01320
`Patent 6,786,418 B1
`
`
`PETITIONER:
`
`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
`
`
`
`
`
`21
`
`

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