Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 38
`Entered: December 3, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MASABI LTD.,
`Petitioner,
`
`v.
`
`BYTEMARK, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-01449
`Patent 8,494,967 B2
`_______________
`
`
`
`Before JOSIAH C. COCKS, NEIL T. POWELL, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Incorporating Decision on
`Patent Owner’s Motion to Exclude Evidence, and
`Joint Motion to Withdraw Patent Owner’s
`Motion to Amend and Substitute Motion to Amend
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 38
`Entered: December 3, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MASABI LTD.,
`Petitioner,
`
`v.
`
`BYTEMARK, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-01449
`Patent 8,494,967 B2
`_______________
`
`
`
`Before JOSIAH C. COCKS, NEIL T. POWELL, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Incorporating Decision on
`Patent Owner’s Motion to Exclude Evidence, and
`Joint Motion to Withdraw Patent Owner’s
`Motion to Amend and Substitute Motion to Amend
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-01449
`Patent 8,494,967 B2
`
`
`I. INTRODUCTION
`A. Background
`Masabi Ltd. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`an inter partes review of claims 1–6, 17–23, and 34 of U.S. Patent No.
`8,494,967 B2 (Ex. 1001, “the ’967 patent”). Bytemark, Inc. (“Patent
`Owner”) filed a Preliminary Response to the Petition. Paper 6 (“Prelim.
`Resp.”).
`The Petition challenged the patentability of each of claims 1–6, 17–
`23, and 34 as anticipated by each of Terrell, Cruz, or Dutta based on
`35 U.S.C. § 102. See Pet. 14. We instituted an inter partes review based
`solely on whether claims 1, 3–6, 17, 18, 20–23, and 34 are anticipated by
`Terrell. See Paper 10 (“Dec. Inst.”), 31. We did not institute a review on
`whether claims 2 and 19 are anticipated by Terrell. Id. We also did not
`institute a review on whether claims 1–6, 17–23, and 34 are anticipated by
`each of Cruz or Dutta. Id. at 33.
`Patent Owner filed a Response to the Petition based on the claims and
`ground for which trial was instituted. Paper 19 (PO Resp.”). Following the
`Supreme Court decision in SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at
`*10 (U.S. Apr. 24, 2018), we modified our institution decision to institute
`trial on all of the challenged claims and all of the grounds presented in the
`Petition. Paper 20. Thus, we added to the trial the issues of whether claims
`2 and 19 are anticipated by Terrell, and whether claims 1–6, 17– 23, and 34
`are anticipated by Cruz or Dutta. Based on the modified institution decision,
`we authorized supplemental briefing. Paper 21. Patent Owner filed a
`Supplemental Response (Paper 22, “Suppl. PO Resp.”) directed to the
`newly-added claims and grounds in this proceeding.
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`
`Petitioner filed a single Reply, addressing both Patent Owner’s
`Response and Patent Owner’s Supplemental Response. Paper 25 (“Reply”).
`Petitioner’s Reply also addressed the preliminary findings made by the
`Board in the Decision to Institute concerning the added claims and grounds.
`See Paper 21, 3–4.
`Petitioner submitted 24 exhibits (Exs. 1001–1024). Petitioner relies,
`in part, on the Declaration testimony of Dr. Sigurd Meldal. Ex. 1004, 1018,
`1019.
`Patent Owner submitted 11 exhibits (Exs. 2001–2011). Patent Owner
`relies, in part, on the Declaration testimony of Dr. Oded Gottesman.
`Ex. 2001, 2002, 2005, 2009, 2010.
`Patent Owner filed a Motion to Amend (Paper 18) and a Substitute
`Motion to Amend (Paper 23). Petitioner filed an Opposition to the Motion
`to Amend. Paper 26. Subsequently, the parties filed a “Stipulated Joint
`Motion to Withdraw Patent Owner’s Motion to Amend and Substitute
`Motion to Amend.” Paper 27.1
`Patent Owner filed a Motion to Exclude Evidence. Paper 32 (“Mot.
`Excl.”). Petitioner filed a Response to the Motion to Exclude. Paper 34
`(Resp. Mot. Excl.).
`A hearing was held August 22, 2018. Paper 37 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. We enter this Final Written
`Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Petitioner has the burden of proving unpatentability of a claim by a
`preponderance of the evidence. 35 U.S.C. § 316(e).
`
`1 The parties jointly request that Papers 18, 23, and 26, and associated
`exhibits 1019–1024, 2008, and 2010 be withdrawn from consideration.
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`3
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`
`Based on the findings and conclusions below, we determine that
`Petitioner has proven by a preponderance of the evidence that claims 1, 3–6,
`17, 18, 20–23, and 34 are anticipated by Terrell and, thus, are unpatentable.
`We determine, however, that Petitioner has not established by a
`preponderance of the evidence that claims 2 and 19 are anticipated by
`Terrell.
`We also determine that Petitioner has not proven by a preponderance
`of the evidence that the challenged claims are anticipated by either Cruz or
`Dutta.
`We deny Patent Owner’s Motion to Exclude Evidence.
`We grant the parties’ Stipulated Joint Motion to Withdraw Patent
`Owner’s Motion to Amend and Substitute Motion to Amend.
`
`B. Related Matters
`The parties identify the following federal district court cases involving
`the ’967 patent: Bytemark, Inc., V. Masabi Ltd., Case No. 2:16-cv-00543
`(E.D. Tex. filed May 20, 2016); Bytemark, Inc. v. Xerox Corp. et al, Civ.
`No.1:17-cv-01803-PGG (SDNY); and Bytemark Inc. v. Unwire APS and
`Unwire US, Inc., Case No. 1:17-cv-10124 (SDNY). Pet. 1; Paper 17. The
`’967 patent also is the subject of Covered Business Method review
`CBM2018-00011. Paper 17.
`U.S Patent No. 9,239,993 (the “’993 patent”) is based on an
`application that is a continuation-in-part of the application that matured into
`the ’967 patent. The ’993 patent also is asserted in each of the district court
`cases identified above. The ’993 patent is the subject of CBM2018-00018.
`Id.
`
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`
`C. The Asserted Grounds
`Petitioner challenges the patentability of each of claims 1–6, 17–23,
`and 34 as anticipated by each of Terrell2, Cruz3, or Dutta4 based on
`35 U.S.C. § 102. See Pet. 15. Petitioner also states that Grounds 1, 2, and 3
`“include arguments based on obviousness.” Id. at 65. Petitioner, however,
`did not argue obviousness in the Petition. Accordingly, there are no obvious
`grounds.
`
`II. ANALYSIS
`A. The ’967 Patent
`We make the following findings concerning the disclosure of the ’967
`patent.
`The ’967 patent discloses a system and method for verifying
`electronic tickets. The system and method use a “visual object” that is
`readable by a person to verify the authenticity of the ticket. Ex. 1001,
`Abstract. According to the disclosure, using such a visual object removes
`the need to use a bar-code scanner on an LCD display of a cell phone or
`other device and speeds up the rate at which ticket takers can verify ticket
`holders. Id.
`As disclosed in the ’967 patent,
`Conventional electronic tickets display a barcode or QR
`code on a user's telephone, typically a cellphone or other portable
`
`
`2 PCT Appl. Publication No. 2009/141614 A1, Nov. 26, 2009, Ex. 1010
`(“Terrell”).
`3 U.S. Appl. Publication No. 2004/0030658 A1, Feb. 12, 2004, Ex. 1011
`(“Cruz”).
`4 U.S. Pat. 7,315,944 B2, Jan. 1, 2008, Ex. 1012 (“Dutta”).
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`
`wireless device with a display screen. The problem with this
`approach is that a barcode scanner has to be used by the ticket
`taker. Barcode scanners are not highly compatible with LCD
`screen displays of barcodes. The amount of time that it takes to
`process an electronic ticket is greater than that of a paper ticket.
`Id. at 2:12–19. To solve this problem, a randomly selected validation
`symbol that a human can readily recognize is sent to the ticket holder’s cell
`phone or other electronic device. Examples of such symbols include a blue
`square (Ex. 1001, 3:25–26), a sailboat (id., Fig. 5), or any other human
`recognizable image (id., 3:25–35; 2:30–33). The ticket holder shows the
`device with the displayed symbol to a human ticket taker who can confirm
`quickly, without using a bar-code scanner or similar device, that the proper
`validating symbol for the ticketed event is displayed. The ticket holder is
`then admitted to enter the event.
`Recited in all the challenged claims, and part of the process of
`verifying or validating that the request is from the purchaser, or authorized
`user, of the ticket, is the use of a “token.” When the user purchases a ticket,
`typically from an on-line website, the website sends to the user's mobile
`phone, computer, or other device a unique number or other electronic
`identifier, referred to as a “token.” Id. at 2:45–47. In addition to being
`stored on the user’s device, the token also is stored in the ticketing database.
`Id. at 2:47–48. Alternatively, the token is generated randomly by the ticket
`buyer’s mobile computing device and then transmitted to, and stored on, the
`ticket seller’s system server. In either embodiment, a copy of the token is
`stored on both the buyer’s and seller’s systems.
`At this point in the process, the ticket buyer has purchased a ticket,
`but does not have a ticket usable for entry to the event.
`
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`
`When the time comes to present the ticket, the venue selects what
`visual indicator will be used as the designated validation visual object.
`Id. at 2:48–50. Thus, counterfeit tickets cannot be prepared in advance of
`the event because counterfeiters will not know the visual indicator that will
`be used. Id. at 2:66–3:11.
`In use:
`At the entrance [to the ticketed event], customers are requested
`to operate an application on their devices. This application
`fetches the stored ticket token [on the ticket buyer’s device] and
`transmits that token to the [ticket seller’s on-line] system,
`preferably over a secure data channel. The [ticket seller’s]
`database looks up the token to check that the token is valid for
`the upcoming show. If the token is valid, then the system
`transmits back to the device a ticket payload. The ticket payload
`contains computer code that, when operated, displays the
`selected validating visual object.
`Id. at 3:65–4:6.
`The ticket taker knows what the validating visual object is for the
`specific event, and simply looks to see that the user's device is displaying the
`correct visual object. Id. at 2:63–65. No scanning or bar code reading is
`required. Id. at 2:25–26 (“the verification is determined by a larger visual
`object that a human can perceive without a machine scanning it.”).
`Barcodes and similar codes, like QR code, are not validating “visual objects”
`because a person looking at them cannot tell one apart from another.
`
`B. Representative Claim
`Petitioner challenges claims 1–6, 17–23, and 34. Of the challenged
`claims, claims 1, 17, and 18 are independent claims. Independent claim 1 is
`representative and is reproduced below.
`
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`
`1. A method by a server system for obtaining visual
`validation of the possession of a purchased electronic ticket on a
`user's computer device for presentation to a ticket taker
`comprising:
`receiving from the user's computer device a request to
`verify purchase of a previously purchased electronic ticket and
`to obtain a visual validation display object that confirms that the
`user possesses the previously purchased electronic ticket for
`utilization of a service monitored by the ticket taker, the visual
`validation display object configured to be readily recognizable
`visually by the ticket taker;
`receiving from the user's computer device a token
`associated with the received request;
`the
`determining whether a
`token associated with
`purchased electronic ticket has been stored in a data record
`associated with the received request, and if it has, whether the
`received token is valid; and
`in dependence on the determination that the received token
`is valid, causing an activation of the purchased electronic ticket
`by transmitting to the user's computer device a data file
`comprising the visual validation display object that causes upon
`visual recognition by the ticket taker, the user to be permitted to
`utilize the service monitored by the ticket taker.
`Challenged dependent claims 2–6 depend directly or indirectly from
`claim 1.
`Independent claim 17 is directed to a “non-transitory computer
`readable data storage medium containing computer program code that when
`loaded and executed by a computer system causes the computer system to
`perform the recited method steps for obtaining visual validation.” It is
`substantively similar to claims 1 and 18. See Pet. 24–27; Ex. 1004 ¶ 43; see
`also e.g., Prelim. Resp. 19 (arguing claims 1, 17, and 18 collectively).
`Independent claim 18 is directed to a system for obtaining visual
`validation of an electronic ticket using computers “configured to” perform
`
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`the recited method steps. It is substantively similar to claims 1 and 17. See
`Pet. 24–27; Ex. 1004 ¶ 43; see also e.g., PO. Resp. 31 (arguing claims 1, 17,
`and 18 collectively; “Terrell does not anticipate claims 1, 17, or 18 because
`Terrell fails to teach claim limitations [c], [d] and [e]”).
`Challenged dependent claims 19–23 depend directly or indirectly
`from claim 18. Dependent claims 19–23 correspond to, and repeat, the
`claimed subject matter in dependent claims 2–6, respectively. Compare Ex.
`1001, 14:28–60 (claims 2–6) with id. 16:41–17:1–9 (claims 19–23); see also
`Ex. 1004 ¶¶ 44–48 (Declaration of Dr. Meldal, Patent Owner’s expert
`witness, opining collectively on each pair of claims 2 and 19, 3 and 20, 4
`and 21, 5 and 22, and 6 and 23).
`Challenged dependent claim 34 also depends from claim 18.
`
`C. Claim Construction
`In this inter partes review, we generally construe claims by applying
`the broadest reasonable interpretation in light of the specification. 37 C.F.R.
`§ 42.100(b) (2016).5 “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). The correct inquiry
`
`
`5 The claim construction standard to be employed in an inter partes review
`recently has changed. See Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`Board, 83 Fed. Reg. 51,340 (Nov. 13, 2018) (to be codified at 37 C.F.R. pt.
`42). That new standard, however, applies only to proceedings in which the
`petition is filed on or after November 13, 2018. The Petition in this
`proceeding was filed on May 18, 2017, and we apply the broadest
`reasonable interpretation standard that was in effect at that time.
`
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`in giving a claim term its broadest reasonable interpretation in light of the
`specification is “an interpretation that corresponds with what and how the
`inventor describes his invention in the specification, i.e., an interpretation
`that is ‘consistent with the specification.’” In re Smith Int’l, Inc., 871 F.3d
`1375, 1382–83 (Fed. Cir. 2017). The broadest reasonable interpretation
`differs from the “broadest possible interpretation. Id. at 1383. Any special
`definitions for claim terms must be set forth with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994). This focus on the Specification helps to avoid what has been called
`“the curse of . . . claims, divorced from the written description.” Retractable
`Techns., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305, 1311 (Fed.
`Cir. 2011) (Plager, Circuit Judge, concurring).
`Proper claim construction requires interpretation of the entire claim in
`context, not a single element in isolation. Hockerson-Halberstadt, Inc. v.
`Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999). While certain terms
`may be at the center of the claim construction debate, the context of the
`surrounding words of the claim also must be considered in determining the
`ordinary and customary meaning of those terms. ACTV, Inc. v. Walt Disney
`Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003).
`Only terms that are in controversy need to be construed expressly, and
`then only to the extent necessary to resolve the controversy. See Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in
`controversy, and only to the extent necessary to resolve the controversy’”
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999))).
`
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`
`We are careful, however, not to cross that “fine line” that exists
`between properly construing a claim in light of the specification and
`improperly importing into the claim a limitation from the specification.
`Comark Commc’ns., Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir.
`1998) (“We recognize that there is sometimes a fine line between reading a
`claim in light of the specification, and reading a limitation into the claim
`from the specification.”).
`Petitioner mentions a claim construction in the related case of
`Bytemark V. Masabi, pending in the Eastern District of Texas. Reply 4.
`Patent Owner also refers to this District Court’s claim construction. P.O.
`Resp. 8. Neither party, however, filed in this IPR proceeding a copy of the
`District Court’s Claim Construction Memorandum and Order, Docket Entry
`Document 81, filed June 20, 2017. We have considered the District Court’s
`Memorandum and Order, refer to it in our analysis below, and, accordingly,
`enter the Memorandum and Order in this IPR proceeding as Exhibit 3001.6
`The District Court construed the claims under the Phillips claim construction
`standard. See Ex. 3001, 1 (citing “Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005)” (en banc)).
`Because claim construction is based on how a term would be
`understood by a person of ordinary skill in the art, we first determine the
`ordinary skill level.
`
`
`6 See Knowles Elecs. LLC v. Iancu, 886 F.3d 1369, 1376 (Fed. Cir. 2018)
`(noting that, in some circumstances, previous judicial interpretations of a
`disputed claim term may be relevant to the Patent Trial and Appeal Board’s
`later construction of that same disputed term (citing Power Integrations, Inc.
`v. Lee, 797 F.3d 1318, 1327 (Fed. Cir. 2015)).
`
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`1. Level of Ordinary Skill
`The level of skill in the art is “a prism or lens” through which we view
`the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001).
`Factors pertinent to a determination of the level of ordinary skill in the
`art include: (1) educational level of the inventor; (2) type of problems
`encountered in the art: (3) prior art solutions to those problems; (4) rapidity
`with which innovations are made; (5) sophistication of the technology, and
`(6) educational level of workers active in the field. Environmental Designs,
`Ltd. v. Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing
`Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376,
`1381–82 (Fed.Cir.1983)). Not all such factors may be present in every case,
`and one or more of these or other factors may predominate in a particular
`case. Id. Moreover, these factors are not exhaustive but are merely a guide
`to determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd,
`Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining a
`level of ordinary skill, we also may look to the prior art, which may reflect
`an appropriate skill level. Okajima, 261 F.3d at 1355. Additionally, the
`Supreme Court informs us that “[a] person of ordinary skill is also a person
`of ordinary creativity, not an automaton.” KSR Int’l v. Teleflex Inc., 550
`U.S. 398, 421 (2007).
`Neither party presents a detailed evidentiary showing of factors
`typically considered in determining the level of ordinary skill.
`Petitioner asserts that a person of ordinary skill in the relevant
`technology would have had “at least a Bachelor of Science Degree in
`Computer Science, Electrical Engineering, or similar educational
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`background, or equivalent on-the job training including approximately five
`years of experience in mobile ticketing application development.” Pet. 23.
`Petitioner does not cite any evidence in support of this proposed level of
`skill.
`Patent Owner “agrees with Petitioner regarding the level of ordinary
`skill in the art.” PO Resp. 4 (citing Ex. 2005 ¶ 7). Dr. Gottesman states that
`“I agree with Petitioner regarding the level of ordinary skill in the art.”
`Ex. 2005 ¶ 7 (citing “Ex. 1004, p. 9”). Exhibit 1004 is the Declaration
`testimony of Petitioner’s expert, Dr. Meldal. Dr. Gottesman does not state
`why he agrees with Dr. Meldal. Moreover, neither page 9 nor paragraph 9 of
`the cited Declaration deal with the level of skill in the art. Thus, the experts
`agree, but neither the Petition7 nor Dr. Meldal explain why or how they
`reached the stated conclusions.
`Based on the record before us, considering type of problems
`encountered in the art; prior art solutions to those problems; and the
`sophistication of the technology as reflected in prior art, we determine that a
`person of ordinary skill in the relevant technology would have had at least
`Bachelor’s degree in computer science, electrical engineering, software
`development, or a similar discipline, and work experience in these areas
`sufficient to understand electronic ticketing and verification or validation
`technologies.
`
`
`7 The Petition does not cite to the Declaration testimony of Dr. Meldal. See
`Fidelity National Information Services, Inc. v. DataTreasury Corp.,
`IPR2014-00489, Paper 9, slip op. at 9–10 (PTAB Aug. 13, 2014) (“We,
`therefore, decline to consider information presented in a supporting
`declaration, but not discussed sufficiently in a petition”).
`
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`2. “Visual validation display object”
`Petitioner proposes a specific construction only for the phrase “visual
`validation display object.” Pet. 22–23. This phrase appears extensively in
`the challenged claims. See e.g. claim 1, Ex. 1001, 14:8, 11–12, 23–24. This
`phrase does not appear in the written description.
`According to Petitioner, the broadest reasonable construction of the
`phrase “visual validation display object” is “any display element that met the
`specification’s own criterion – ‘any object that is readily recognizable from
`human observation.’” Id. at 23 (citing Ex. 1004 ¶ 50). Dr. Meldal states his
`opinion that this phrase means “any ‘object that is readily recognizable from
`human observation.’” Ex. 1004 ¶ 50. He reaches this opinion without
`stating the underlying facts or data on which the opinion is based. See 37
`C.F.R. § 42.65(a). This opinion is entitled to little or no weight. Id.
`Petitioner relies on the written description’s disclosure of a similar
`phrase, “validating visual object,” to reach its proposed construction of the
`claim phrase “visual validation display object.” Pet. 22 (“The specification
`of the ’967 patent does not utilize or define the term ‘visual validation
`display object’ outside of the claim language. Instead, the specification of
`the ’967 refers to a ‘validating visual object.’” (citing Ex. 1001, 2:10–11)).
`In its Reply, Petitioner “counter proposes” a modified construction,
`which is “a display object that is readily recognizable from human
`observation and provides an indication of a ticket’s validity”. Reply 7
`(citing “Ex 1018 ¶¶ 33-35”). Exhibit 1018 is Dr. Meldal’s supplemental
`Declaration in support of Petitioner’s Reply. Paragraphs 34 and 35 are
`irrelevant to the construction of the term “visual validation display object.”
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`These two paragraphs discuss the construction of the term “token.”8
`Paragraph 33 of Exhibit 1018 states that Dr. Meldal “read the Board’s
`decision to institute and have revised my proposed construction according to
`their guidance.” We find this candid but conclusory statement unpersuasive
`in determining the proper construction of the term “visual validation display
`object.” We give it no probative weight. The role of expert opinion
`testimony is for the expert to use his or her scientific, technical, or other
`specialized knowledge to help the trier of fact, here the Board, understand
`the evidence or determine a fact in issue. Fed. R. Evid. 702(a). It is the fact-
`finder who looks to the expert for guidance, not the reverse.
`In our Decision to Institute this proceeding, we adopted the
`construction of the term “visual validation display object” proposed by
`Patent Owner in its Preliminary Response, which was “a display object that
`is readily recognizable from human observation and validates a ticket.” Dec.
`Inst. 12 (see Prelim. Resp. 5–6). Patent Owner now proposes a different
`claim construction.9
`Patent Owner now submits that a “visual validation display object”
`should be defined as “a display object that is readily recognizable from
`human observation that verifies the authenticity of a ticket and is reasonably
`secured so as to avoid piracy.” P.O. Resp. 4 (emphasis added). Patent
`
`
`8 We note that Paragraphs 24–32 of Ex. 1018 also discuss construction of the
`term “visual validation display object.” Petitioner has not cited to these
`paragraphs to support its argument. Accordingly, they are not considered.
`See Fidelity National, IPR2014-00489, Paper 9, slip op. at 9–10.
`9 There is no rule that prevents Patent Owner from proposing a claim
`construction in its Response, under 37 C.F.R. § 42.120, different from the
`construction asserted in its Preliminary Response, under id. § 42.107.
`
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`Owner asserts that its revised construction includes “the more precise
`concept of “verification” instead of “validation.” Id. at 5. Patent Owner
`asserts that the term “validation” is “ambiguous” and thus needs
`clarification. Id. We note that Patent Owner uses the allegedly ambiguous
`word “valid,” “validation,” “validating,” or other forms of the word “valid”
`127 times in the written description and claims of the ’967 patent.
`According to Patent Owner, “validation” means declaring something
`“officially acceptable” or checking the “validity” of something. Id. (citing a
`website definition that has not been entered as evidence in this proceeding).
`See 37 C.F.R. § 42.63(a) (“Evidence consists of affidavits, transcripts of
`depositions, documents, and things. All evidence must be filed in the form
`of an exhibit.”). Because it is not evidence, we consider this definition as
`part of Patent Owner’s argument. Patent Owner argues that the term
`“validation” in the claims is used to mean checking validity or “verifying the
`authenticity of tickets.” P.O Resp. 5.
`The end result of “validation” of a ticket using the “visual validation
`display object” is that the ticket taker determines, based on a visual
`inspection, whether the ticket is acceptable for entry to the event or service.
`If it is, entry is permitted; if it is not, entry is denied. There is no persuasive
`evidence that validating a ticket is substantively different from verifying the
`authenticity of a ticket, as now proposed by Patent Owner.
`Patent Owner refers to numerous uses of the word “verify” in the
`Specification as support for its proposed claim construction. Id. at 6–7. The
`words “verify” and “validate,” or variants thereof, seem to be used
`interchangeably in the Specification. For example, the Specification refers
`to a “human perceptible verifying visual object.” Ex. 1001, Abstract; see
`
`16
`
`
`
`IPR2017-01449
`Patent 8,494,967 B2
`
`also, id. at 1:49–50 (stating Figure 3 shows a “Flow chart for displaying the
`verifying visual object”); id. at 10:1–4 (stating the option of a command that
`automatically deletes “the verifying visual object” from the ticket
`purchaser’s device to ensure that it cannot be reused or copied) (emphases
`added). The Specification also uses the phrase “validating visual object” to
`refer to the same element. See e.g., id. at 1:51, 52, 59–60 (stating Figures 4,
`5, and 11, respectively, show a “validating visual object”); id. at 2:10–11
`(stating the customer’s device is used to display the “validating visual
`object.”) (emphases added). Accordingly, there is no persuasive evidence to
`which we have been directed that establishes a substantive difference
`between a verified visual object and a validated visual object.
`Patent Owner also proposes to add the phrase “and is reasonably
`secured so as to avoid piracy” to its asserted construction of the claim term
`“visual validation display object.” P.O. Resp. 4. Patent Owner does not cite
`any persuasive evidence to support this added phrase. We recognize that a
`basic objective of the ’967 patent is to prevent a “would-be pirate” from
`obtaining “the data file comprising the ticket payload” and distributing it to
`unauthorized persons or devices. Indeed, one of the criteria for what
`constitutes a validating visual object is one “that can be reasonably secured
`so as to avoid piracy,” which is the phrase Patent Owner wants to add to its
`proffered claim construction. See Ex. 1001, 3:14–19.
`The preferred embodiments address the “threat model” of piracy in a
`number of specific ways. See id. at 5:25–6:59 (disclosing numerous
`alternatives to “deter[ ] piracy.” Some of these anti-piracy measures are
`included in dependent claims. See e.g., claims 4 and 5 (reciting an
`additional “authorization key” and “encrypting” the display object using the
`
`17
`
`
`
`IPR2017-01449
`Patent 8,494,967 B2
`
`authorization key). These piracy deterrents, however, are not recited in
`challenged independent claims 1, 17, and 18.
`We determine it would be error to construe the term “visual validation
`display object,” recited in independent claims 1, 17, and 18, to refer to or
`include any of the specifically disclosed anti-piracy methods or limitations.
`See Phillips, 415 F.3d at 1323 (“although the specification often describes
`very specific embodiments of the invention, we have repeatedly warned
`against confining the claims to those embodiments”). Moreover, we find
`ambiguous and undefined in the Specification the proposed generic phrase
`“reasonably secured so as to avoid piracy.” Our objective is to construe the
`claim, not add ambiguity.
`To construe the term “visual validation display object,” which is at
`issue, we look to the words of the claims themselves, the remainder of the
`Specification, the prosecution history, and probative extrinsic evidence.
`a. Claims
`Independent claims 1, 17, and 18 each use the term “visual validation
`display object.” See, e.g., Ex. 1001, 14:8; 15:62; 16:21. The language of
`claim 1 is representative and will be discussed below.
`The phrase “visual validation display object” appears three times in
`claim 1. First, claim 1 states that the claimed method includes the step of
`receiving from the ticket purchaser’s computing device “a request to verify
`purchase of a previously purchased electronic ticket” and “to obtain a visual
`validation display object” that confirms that the ticket purchaser “possesses
`the previously purchased electronic ticket.” Ex. 1001, 14:6–10 (emphasis
`added). Second, claim 1 states that “the visual validation display object [is]
`configured to be readily recognizable visually by the ticket taker.”
`
`18
`
`
`
`IPR2017-01449
`Patent 8,494,967 B2
`
`Id. at 14:12–14. Third, claim 1 states the step of transmitting to the user's
`computing device “a data file comprising the visual validation display
`object.” Id. at 14:23–25. When further activated, the “visual validation
`display object” can be recognized by the ticket taker.
`Thus, as recited, the “visual validation display object” is something
`sent to the ticket purchaser’s device based on a request to verify a previous
`ticket purchase.
`
`b. Specification
`
`As noted above, the phrase used in the claims, “visual validation
`display object,” does not appear in the Specification. In construing this
`phrase, both parties rely of a similar phrase “vali
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